vfcoru vapest*
A SELECTIVE MICROFILM EDITION
PARTI
(1850-1878)
Thomas E. Jeffrey
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Frederick, Maiyland
1985
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BOARD OF SPONSORS
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New Jersey
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Richard P. McCormick
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CORPORATE ASSOCIATES
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•Arthur M. Bueche, General Electric Company
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Paul J. Christiansen, Charles Edison Fund
Philip F. Dietz, Westinghouse Electric Corporation
Paul Lego, Westinghouse Electric Corporation
Roland W. Schmitt, General Electric Corporation
Robert I. Smith, Public Service Electric and Gas Company
Harold W. Sonn, Public Sendee Electric and Gas Company
Morris Tanenbaum, AT&T
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PRIVATE CORPORATIONS AND INDIVIDUALS
Alabama Power Company
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Middle South Services, Inc.
Minnesota Power
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New York State Electric & Gas
Corporation
North American Philips Corporation
Philadelphia Electric Company
Philips International B.V.
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RCA Corporation
Robert Bosch GmbH
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Transamerica Delaval Inc.
Westinghouse Educational Foundation
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QUADRUPLEX CASE VOLUME 71 - CONTENTS
Atlantic and Pacific Telegraph Company v. George B. Prescott, Western
Union Telegraph Company, Lemuel W. Serrell and Thomas A. Edison.
Superior Court of the City of New York. ~
1. Testimony for Defendants.
List of Witnesses:
Philander E. Wilson
Agnes E. Blodget
Edward E. Quimby
Joseph T. Murray
Lemuel W. Serrell
William Orton
Gerritt Smith
George M. Phelps, Jr.
George B. Prescott
Moses G. Farmer
2. Defendants’ Exhibits.
OI'-ccKa'^ 20,?- '"
9H-<^^#oftW--/u>^ Cjictc O&UMAA., j.?-6$
/fatjJLa^M \j~ y(tyC (t, Jl 56.
M ce/Wkfejrevfl ojtt 3 •j.j
CITY AND COUNTY OF NEW YOllK.
The Atlantic and Pacific Tele-
| graph Company
'i against
GEORGE B. PRESCOTT AND OTHERS.
Hbakiko Besumed, May 14, 1877.
• Philander 11. Wilson , called for dofondiuit, sworn.
Direct- cjaminalion liy Mr. Dickerson.
; Q. What is your residence and your oflleinl position 1
1 A. I reside in Washington; I am in charge of the digest
of assignments; making abstracts of title, and in addition
j have charge of the records ot assignments myself ill tbo
Patent Oilieo of tlio United States.
•j Q. Look at tbo book now shown yon entitled Transfers
of Patents, Letter U, 18 Patent Oilieo, and stnto to tlio
Court wlmt Unit book is.
j A. It is n record of tlio assignments of tlio inventions
and patents of tlio United States Patent Oilieo.
J Q. XIow long lnivo you bad that book in your custody I
A. I lmvo. lmd it in my custody sineo iiliont Juno Gth,
1371; it ciimo into my possession at tluit time.
J Q. State under wlmt circumstances, it any, that boolc
may bo or has been withdrawn from your custody.
;} A. In ease ii copy of an assignment recorded tiicro was
desired, this book would go from my possession to tlio
4 clerk who makes tho copy and would remain with that clerk
until the copy was made mul then returned to mo.
Q. Under what other circumstances could it ho with¬
drawn from you 1
A. It would he withdrawn hy tho commissioner or chief
clerk, or assistant clerk, or any examiner in the otllce that
wished to read an assignment. He could take the hook
away himself, or send for it until ho Accomplished his pur¬
pose and then return it to mo.
Q. Will yon ho good enough to show tho Court tho
record of assignment of Thomas A. Edison to Georgo liar-
5 rington April 4th, 1871.
Mr.. Wheeler : I dosiro to put an objection nowon tho
record. Tho purposo of offering tho hook, I suppose, is to
show that tho record did not contain this word that was
in the original. The point wo mnko about that is that wo
fulfil our duty when we send a paper there to ho recorded
in tho Pntunt Otlico. 11 through any mistake of tho copy-
ist tho record is impcrfuct we consider tlmt that does not
make tho original defective. I dosiro to mnko tho objection
now to receiving tho record in ovidonce ns tho paper itself
6 is before tho Court. I don’t ask your ilonor to rule on tho
point now.
The Court : Tho witness will show mo tho hook at all
events.
(Witness hero shows tho record hook to tho Court.)
Q. Will you stnto to tho Court whether tlmt word “ or”
between tho words mechanical and telegraphy has been
interlined there.
7 (Objected to on the ground previously stated. Objection
overruled. Exception taken.)
A. It hns tho nppcnrnnco of being interlined.
2 he Court: It speaks for itself — tho question is perhaps
• objcetionnblo in tlmt point of view, hut I don’t understand
tho counsel to put his objection on tlmt grouud.
§ Mr. Dioltoraon, : Wo will hnvo it photographed.
“j Q. Also is it in tho snmo ink ns tho original record,
if (Objected to.)
' A. It is in different ink.
■, Q. And different pen ?
is; A. Yesj it scorns to ho a different ink.
ivj Q. In tlie months of January, February, March, April
and May, 1875, wliuro and how was tho seal of tho Patent
Otllce kept i g
A. It was in clmrgo of tho clerk who had charge of
making copies.
Q. Was it whore it could bo used hy nnyono 7
: ■' Q. It was in a room that never was locked, and tho seal
itself was not locked. .
■:j Q. Look at for instnneo tins printed form of a cortiflcnto,
Which is auuuxcd to a cortiliuato datud April 14, being a
.Certificate from tho Patont Olllco of a copy of this docu-
iment. I asked where those blank certificates were kept,
•and in what condition they wore kept— I speak of that
. oluss of certificates - 10
Mr. Wheeler : I should like to know what tho object of
that inquiry is?
| Mr. Dielicnon : I linvo no hesitation in tolling you. The
seal of the Patont Ofliuu at that timo, and these blank
certificates signed hy the Commissioner, m blank, ready
to ho filled in by whoever had authority or might use thorn
were open to anybody; at that timo they were kept in tho
, olerk’s oflleo, and anybody could go and gut one— tho seal
fwas open to anyouu. Since thu present Commissioner 11
.(uiiuo in ho has put tho seal under lock and key, and put
tlio key in tho control of somebody where it cannot, ho so
used. But I am speaking of tho condition of things when
tlicso wore made.
■iff Mr. Wheeler: I don’t seo how tlioso things are material ;
that is tho ground of my objection. It will ho opening
al instrument 01 wiin.ii
bears on its face such u condition
» that wont as to givo rise to ran-
ween the parties nlreiuly. i tlont
stata of tlm pleadings as to tlmt
lilooviilout that tlioro is to tie cun-
it hesitate to toll my friend wlint 1
■twill bo called upon by the counsel
lino whet her there is a word “or
m more besides. • What is men
noceed to show your honor tlmt
w before you broke out that jjj
e books of the 1’atent Ollice stir. '
w by whom at. present.
y bo and probably is competent
tlio .into wlion that alteration in tlio record was made. J ho
paper that Brother Wheeler lias is the certificate of record.
The record of what ? Why, whatever was under the cover
of tlio cortillonto. It Inis no » or” in it. I7ow,wo ,mv®>
.will oiler in a moment, tlio eortlfleato of tlio 1 ntont Ollleo
i 'of .Tammry -7, 1875, without tlio word “or.” Then Brother
Wheeler 1ms liere tlio cortillonto or tlio Patent Ollleo ol
' ’April U with tlio “or” In. Those are the fences that do-
• lino the limits of timo within which tlio forgery was done.
' And now I uni going to show under what circumstances it
■ was, and to show that this paper did not oomo from the
. Patent Ollleo at' all.
Mr. 11 'heeler: You can’t show that. This is dated tlio
: ' l ltli of April, 1877, and not 187».
The Court: Tlio only question now ' before tlio Court is
5 whetl, or it is competent for Mr. Dickerson to l’1;1
the blank forms on which the eort, (lea os More habituallj
.issued were accessible to tlio public at largo.
1 ' (Question waived).
: f n Xnw. I will ask you to loolt at this copy, and wo wll
.Mr. Wheeler : I would like mi objection noted to Hint to
The Court: As a matter of judicial notion I cannot put: tlio same point, on the sumo ground ns Hint previously
[ion the record without consent. stated.
Mr. Wheeler: Then I innko no admission.
Q. Was tlml manuscript, copy prepared in the fatal
mice }
A. 1 think all copies aro made by ladies in the Pates:
lllce, ami I don’t think this is a lady’s handwriting; I
juldn’t say positively, though, whotherall copies are iiiiiA
y them or not; but 1 think that all copies are made In
idles.
Q. Aro tho copies from the Patent Oftleo examined, ant
mrked examined, before they are cerlilicd f
A. Yes; they are examined, and the initials of the clal
ho makes thu examination are put at the end of the cop;
loy give tho date of record, I think, of tho instrniucr
self, and then under Hint date of record the initials of tli
ork who makes tho comparison or reads.
Q. ( liy ihe Court.) Tlioso initials indicate that tho cop;
• wlmt purports to be a copy, has been compared with tl
icord 1
A. Yes, sir; and the initials of tho clerk who mmlo tb
miparison.
Q. And this copy has not that on it, has it l
A. I don’t see it an where; i don’t see anything of tb
ind here.
Mr. II heeler : Let me understand. Do you oiler tlmtit
.'idonco 1
Tho Court : 1 will tako tho evidence and sco wlmt tho
practico is.
,.|A. Tho practice is, if nil error was inado by a clerk in re¬
cording, and the attention of tho oflico was culled to that
and the original instrument in writing was produced, and
after a careful examination it was found that an error did
bbcur it would be corrected.
^Q. Supposing, in copying it, the clerk should have omitted
a word and tried to interline it, whatwoiild be tho practico
of tho oflico in correcting the face of tho record at the timo
of making it t
A. jSo interlineation would bo made if there was no room
to put in thu word without making an interlineation ; a por¬
tion ol tho record would bo erased, anil it would bo written
closer and smaller, so that the word could go in in its
proper place, so that it would not appear as an intorliuoa-
tion at all.
Q. {By the Court.) lfow could that bo if tho omission
was not discovered until after tho whole record was com¬
pleted t
■tA. It could bo done by erasing a lino or half a lino; if a
word was loft out they could erase two or three words
either bol'oro or after thu word that should go in, and then
writo tho word in mid write that that was erased smaller,
so that it could come in in its proper place, and tho record
then would bu made without any interlineation.
~|.Q. Looking through that book, aro there any interlinea¬
tions iu it nnvwhcrof
Mr. Dickerson : I do.
nrginui note ; if thcrownsa marginal notu nr n paragraph
the bottom stating that iitterliiieatioiiK or certain lines
ere nimlu buloro signing. Hint would be put ti]ion the
cord to show that it tvns n true copy.
Q. Like n Chinese copy t
A. Yes, sir.
Q. Wns Hint word “ oi" in this rcoord pul tlierc with
lur knowledge or consent?
A. No, sir. 1 knew nothing about it until this Inst tea
>ys or two weeks; it wns pointed out tome by an attorney,
Ir. l’ollock mill Mr. Dickerson. 1 knew iiolliing about it;
int wns the Hist intimation 1 bad Hint there wns any roll¬
overs}' about it, or that there was any interlineation. I
adc this examination then and saw it.
Mr. Didrnon ; Wo will offer that and furnish a photo-
Ihogrnphic copy of it.
(l’lloto-lithogiapbio copy of the original record in the
ntcut Ofllco will bo marked Exhibit .'17, and the cert illcd-
>py of the record, dated April 1-1, 1S77, will be marked
xhibit DU.)
'ms-examination by Mr. Wheeler.
Q. You, JJr. Wilson, as I understand it, do not supervist
io copying of papers sent to.tlio Patent Ollicc.
A. No, sir; l have no control over that branch of the
nsiiicss at all.
Q. Who is the person, that receives the papers wlieuthoj
rat come to the ollico to be recorded!
A. 1 have charge of tho reception and indexing; I imike
n index and digest of the ussimiiiicut. an index of it. and
tno uoo ic Kept tor taut purpose f
A. Yes, sir.
Q. And then you deliver it to the copying department.
Q. Now, to whom do you givoit in tho ordinary courso
of business — to whom did you in tho year 1S71 1
A. la the year 1871, 1 gavo it to a man by tho linmo of
. Statiniiis, who had charge of the business at that time.
Q. Thop ho had charge of the copying department !
A. He had charge ofcopyiiigassiguiiiouts— he had clinrgo
of the record of assignments.
Q. Wlmt I call the copying is tho copying into this book
‘or similar books of original instruments 1
Q. lie had cliargo of that!
A. Yes, sir.
Q. And under him were numerous copyists?
A. Tho usual expression is recording.
Q. It seems to mu that copying expresses moro clearly
what I wanted to getut — the copying into the book. Now
he had under him numerous copyists who did the manual
work of transcribing into tho books kept in tho ollico for
the purpose of recording instruments received, hail ho
not!
! A. Yes, .sir.
Q. Do you know in whoso handwriting that book of ro-
:: A. I do not, sir.
; Q. It is not in tho handwriting of Mr. Stntinius, of
i A. No, sir.
■ Q. llow many copyists woro employed in tho ofllco in
1871 for that purposo ! 2
Ir. Dickerson. Tlio certified copy
lias the letter "l” in
ss-examinalion liy Mr Wheeler.
As I understand you tills supervision of correcting a
ird by reference to tlio original was not under your
ervision ; but so i'ur as it was under tlio supervision of
subordinate in the olliee, it was under that of .Mr. Stat¬
us. Js not that so?
.. Yes, sir ; 1 had no control of the record of assignments
opics of assignments.
. Do you recognise the handwriting Of tiiis irtauuscri|it
ificuto which is written in tiiu margin uflixhibit it?
.. 1 don’t know that that certificate was written by the
le clerk who placed those initials there or not j 1 think
; those uro l'uiiny McMahon's initials, and that would
icato that she had niiulo the examination of this,
j. lint the certificate is not in her handwriting!
l. 2s o, sir; not in her handwriting : the record was made
another clerk, and tlio examination or reading of tlio
a'uiuuutwas made by Miss McMahon.
•. Is not this certificate here in tlio handwriting in
ich the body of the record is written ?
!. And then tlio signature, Samuel A. Duncan, is in his
l handwriting 1
.. In his own handwriting.
Mr. Wheeler. This has the word “model” in it instead
« modes,” in tlio second lino from the bottom or the fl:
page. Wo object to tlio introduction of this copy on t
ground previously stated in regard to tlio record ; also,
the ground that there being a certified copy from t
Patent Olliee of this record in it is not competent for tin
to impeach either the original or tlio copy by putting
another copy ; that that could only ho done by the introdi
lion of parole ovidonco of the parties who had that ilcpii
meat in charge, showing the net util facts and tlio Introdi
tioii of another eertiliento on tlio subject does not tend
impeach either the copy already in or the original rccc
which has boon offered in evidence.
Mr. Dickerson : It tends to show what tlio stato of t
record was at its date ; I think it is competent in tl
Mr. Wheeler : I would like to liavo tlio objection notci
J Vie Court ; Koto tlio objection, and that tlio document
I'ecuivcd and that an exception is taken by tlio plainti
counsel.
Agnes E. Blodgett, callod for tlio defence, sworn.
Direct examination by Mr. Dickorsou.
dcnco wore being offered by Mr. Wheeler, ho offered con-
voynneos by a Samuel M. Mills to the A. and P. Telegraph J
Company, marked 11 Exhibit M,” also the papor marked
“Exhibit L " in tlie book of exhibits, all of which occurred
after 1 had made the somewhat premature and certainly
futile motion to your Honor to direct the plaintiff to elect
upon which of these titles ho should proceed. Your Honor
asked him to wlmt portion of the complaint they icfoncd
to, and his an uer w is tl t tl ey enmo under the general
allegation of a complaint. At tho moment I v a o c I at
surprised, and thought I had certainly overlooked some n
thing in the complaint, and nothing further was said I 8
suppose, however, it is not too late now to call attention to
the fact that thero is no allegation, either general or specific,
m tho complaint, which would justify the readin" of theso
papers in evidence. I now propose, in proper form, to
move to strike out of tlio plaintiiT’s evidence these two
papera. Should my friend think it proper to amend his
complaint so ns to conform to tho proofs, I suppose your
Donor will permit him to do so ; for if it remains it will ho
accessary for us to call witnesses that otherwise would not nc
be necessary to the case.
Mr. Wheeler: Thero is a gcnoral allegation nt tho foot of
l>ngo 2, and tho top of page 3 of the complaint, which avers
that Jay Gould executed and delivered to this plaintiff', for
a valuable consideration, an assignment of nil his interest in
the Duplex and Quadruplex. It is not averred as specifi¬
cally as it ought to be, and it is desirable that tho complaint
should bo amended in that regard, and I would ask that we
have permission to nmend it, in order to conform to tho
proof. , 89
Mr. Porter: I would like to have it sworn to, ns it is pro¬
posed to be amended.
The Cowl: Tho amended bill should bo verified.
Mr.lowmj: There is one other point to which I desire
0 call your Honor’s attention and that of my learned friend.
100 I find, upon a oriticnl examination of the complaint, that
there is no specific reference to tlie three applications that
lmvo been put in evidence here, and which are in contro¬
versy between us. The applications I refer to are 111,
112 and 113. I think it would ho belter to have this
formally staled in the complaint.
Mr. Whaler: I think it would bo advisable to lmvo the
bill amended, also, in that regard. Of courso tho answer will
be considered to stand ns to tho amended bill.
101 Mr. Lowrcy : Tlint we cannot ngreo to. Wo may lmvo to
amend the answer after seeing the complaint ns amended.
Om-iito Augume.nt or Mil. Lowittsy.
I lf the Court please : At tho end of nearly four weeks of
ljoth l,nMic.s have received from the Court
mu ml indulgence, especially in the extension of the term,
„ ° , t0. d,sl,oso °f this very important cause, we feel
upon our side not only bound to acknowledge such indul.
2 Sb fw "SCn-°UPHn10',r t0”mit' as lmw
possible, wlmt remains to be done, so that this case can he
103 8»pl. Company of the right of title of Jh Harri!1?
die complain, and wo il.-T ° * "lotion dismiss
coA „■ £' 'r " r" -
1 are lllat no caso lias been
made entitling tho plaintiff to tho relief asked for, to make in,
that mot, on; but there are very strong wishes in the mind
of certain of our Cents that this controversy, which has
been in dispute in the Patent Office, and which has been in
the mouths of telegraphers for several years past, and in tho
courso of winch many unkind and unfounded aspersions
have been made, should have now a f„ 1 „ , Jcl „
ventilation, and, accordingly, it has been resolved to trespass
further upon your Honor’s patience, and to put upon the
stand witnesses, as much that our friends on the other side
may have an opportunity of cross-examining them, which itw
they seen, to need, as that your Honor may have before you
evidence, all of it tending directly to refute tho testimony
Inch has been given by tho plaintiff. I regret very much
hat my brother Whcolor thinks it would not bo fair for mo
to make a shorter opening than ho did. Since that intima-
hon I have not had tho time, in tho condition of health in
winch I have boon, to proparo an oxtondod oponing, evon if,
our mow of tho ease, wo lmd not doomed it entirely un.
necessary. Since our courso in the matter has boon deter.
oTerL t'!a 'T"0t- md tho 0PI’°,’tu„ity to prepare any m
fairToTh dTorc„ t °PO„ ' „=• I wish, however, to be perfectly
fair to lie counsel upon the other side, and 1 will say that
0UBhl*nV>fa5°MOf 1,10 UnS0’ it nPP°nra to them that they
0‘™ r0"l'US any intinWtio“ in ro8urtl any point
« 1110,1 may bo supposed to bo veiled from the n, or
e I, w,s , we shall most eheerfully inform them. We have
ortho ’ 0r‘tll0r 111 t,1U of °P«ni"S arguments
lias u ? °f faots ’ trusting that the little which
oced^to mil'll Wl Ist f°u„d tb be enough, we will pro-
need to call tho witnesses for tho dofonce. 1 107
JaSej,h T‘ called by defendants and sworn.
Examined by Mr, Lowroy.
have boonln'f y°" aro a toleSraph instrument maker, and
y™ 0 t°r some years past?
A- Yes sW 3’°U r0Sid° ‘n No'rark?
108 Q. You are engaged in business there?
Q. Do you know Thomas A. Edison and George Harring¬
ton, and it so, how long have you known thorn ?
A. I have known Mr. Edison since 1870, and Mr. Unr-'
rington since tl c ci c t of the year 1871.
Q. Wore you in the employment of Mr. Edison in 1S70]
and it so, whore and in wlmt enpaeity 7
A. I was with Mr. Edison in 1870, near the closo of that
year.
109 Q. In Newark ?
A. Yes.
Q. In wlmt capacity 7 .
A. Assisting him in his experiments.
Q. When did your employment by Mr. Edison terminate,
and in wlmt manner?
A. It terminated in 1872.
Q. By Mr. Edison nlono ?
A. I tlion wont into partnership with Mr. Edison.
; Q- ^hl you go into the employment ot Edison and Ear-
110 rington at any time during' tho period that you lmvo spoken
A. I did.
Q. When ?
A. January, 1871.
Q. Then your employment by Mr. Edison, solely, termi¬
nated whon you went into tho employment of those two ?
Y°u "° say y° cml loy nc t tli Mr. Edison,
111 ^ .and tlmt y°u 'v°nt into tho employment
themtmi8mnn'"’slon’ nnd continuod t0 b0 omP'°^d b>'
A. I was partly with lnm and partly with Mr. Harring¬
ton ; I received pay from each.
Q. Bid you know of tho organisation of the firm of Edi-
A JcT"8 187°' mid °f ll,0ir e°ine into business?
Q- Did they employ you ?
A. Yes.
Q. How long did you continue in tlisir employment ? 112
A. From January 9, 1871, until Fobrutiry 5, 1872.
Q. Wlmt was tho occasion of your leaving their employ.
. incut? 1 J
A. Tho reason was because Mr. Edison had severed his
relation with Mr. Harrington in manufacturing, and I went
with him.
Q. Wliero did ho go to ?
A. He had a shop in Hnilroad street, Newark, separate
from tho shop of Mr. Harrington. ....
Q. lie wont to that shop ? 118
A. Yes.
Q. Previous to that time, wliilo you wero with them, was
he always or principally at tho shop whore tho business of
Edison St Harrington was carried on ?
A. Ho was tlicro principally.
Q. Participating in tho work ?
A. Yes.
Q. After tho time whon ho went away, did ho return to
do any work, to your knowledge, to that shop, or to partiei- m
doing? * 10 bUS‘"CSS Whiel‘ 12t]is011 * U«rrington had been •
A. Never.
Q. Ho never did ?
A. No, sir.
Q. Did you lmvo any conversation with Mr. Harrington
n or about that timo concerning tho sovornneo of the rela¬
tions as you have described between Edison and himself?
A. I did.
(Objected to on the ground that any conversation between 115
Bible- llnCSS !Uld ^r‘ ^nrr‘"St0" ’s not competent or ndmis-
Die Court: I think, in respect to third persons, that tho
declaration of both to tho elleet that the partnership had
evid nt n *>art’ou*nr l',noi >3 competent I will receive the
(Plaiutifi’s counBol excepts.)
116 Mr. Wheeler: I don't understand your Honor as passing
upon tlio efl'eots of tho evidence.
The Court : Certainly n
Q. What did you hear Mr. Harrington say ?
A. I met Mr. Harrington on Broadway, and he made
inquiries from me what Mr. Edison was doing.
Q. When was that?
A. I believe it was in the year 1873.
Q. Before 1873, at or about the time that Mr. Edison loll,
117 did you hoar any conversation?
A. No, sir.
Q. Had Mr. Edison gone away and remained away ?
A. Yes.
Q. He went away and had nothing more to do with the
... t mifnetnring was concerned. Is that
business, so far as
SO?
A. Ho loft the factory and never went back to it
Q. Do yon know of tho automatic telegraph lino or its
business? Have you at any time known about n concern
118 of that kind in any way ?
A. Yes.
Q. Do yon know whether Mr. Edison has, at any time,
acted ns electrician for that company ?
A. Yes.
Q. Whon did he begin to act as electrician for that com¬
pany ?
A. I cannot answer that,
"°w a PeriolJ time that you aro speaking
of m 1873. Was it not at that period that you met Mr.
110 Harrington ?
A. After I had seen Mr. Harrington, Edison resumed
1,10 Autom“tic Telegraph Company,
at 64 anil 66 Broadway.
vnLlIhC",r,U m.0t Mr- U^rington, bad you any con-
vcrs.ition with lmn in respect to Mr. Edison’s then business
Q* Wliat did ho then say ?
(Objected to on the same ground as heretofore statce
Same ruling and exception.
v what Mr. Edisoi
A. Mr. Harrington wanted to 1
was to work at. I told him ho w
wanted to know if lie could see him. I told him yes, tha
•be could probably find him at tiie factory on Hailroa 1 street
lie asked me if I thought there was any use of his trying t<
get Edison back again. I told him I thought there was, on
conditions; the conditions to be, that lie was not to bu in
trrruptcd, and that he should have command of everythin*
in relation to thonnlomntic system, and manage it in his owr
way. 1 believe lie corresponded witli Mr. Edison on that
point, and brought about an arrangement so that Mr. Edi
son went there to work.
Q Where?
A. At (14 Broadway.
Q. That was tho oflicc of the Automatic Company ?
A. Yes.
Q. Went to work at wliat, did you understand ?
A. Managing the company, running the line; working tho
system between New York and Washington.
Q. Did he return thereafter to the shop of Edison &
Harrington?
A. No, sir.
Q. Alter the time of his leaving, in 1872, did lie par¬
ticipate in the manufacture at that shop, or participate iu
,l,n business which was being carried on there ?
A. No, si
A. I in
— partnership with Mr. Edison.
Q. When did you go in partnership with him ?
A. February 6, 1872. o'
Q- In what business?
A. Manufacturing telegraph instruments.
<1- .Where 7
A. 113 and 116 Hailroad avenue, Newark, i
Q- Was there any limit to tho terms of this copartnership
* J'ou "lal*° with him? Was your entire time and at¬
tention giveu t0 tijU business?.
. By Mr, Lowrcy:
125 Q. You went to work under that management, and com
tim|ed to work under it for how long ?
-'A. Until May 25, 1875.
Q. Wlmt was the firm name?
' A. .M urray & Co.
Q. Do you know whether Mr. Harrington know of the
existence of this firm ?
A. Ho did.
UIKler l>iat <inn name did you do any business
120 with Mr. Harrington?
A. Yes, sir.
Q. Wlint business?
A. Manufactured automatic instruments for him.
A Yes sir'* rCt0iVUl' l"‘y U|,°" llia ordo™'/
Q. And received payments from him ?
. A. Yes.
■■ J. SZ'mCpS i's! “““l ’
m ,l,lw ‘•t'" ■■ — “ J" '■*«"" «»», «
. A. Yes.
A. Yes °°ntinUed dUring tll0se thrco years ?
in^tho °VOr mako olailn uPon you that,
something for tl °f • "S nccounts> *>« should be allowed
A ?st SOrV1CCS°r Mr' Edison “ »'«• partner ?
tlic\n; .,.r i m!!* ll" nK sai(* by him in any way to
Q. Was the employment by Mr. Harrington, of your
firm, partly regular and constant during tins period ?
A. Yes. j
Q. You imd regular monthly settlements with him?
A. Yes.
Q. During all these threo years ?
A. Yes.
Q. These settlements were with Mr. Harrington alone on
the one side, and by the firm of Edison & Murray on the
other?
A. Yes. I want to ‘mako an explanation in regard to
that. Edison had tlirco distinct partnerships; be had one with
Mr. Hatringlon, and had ono with Mr. Unger in Hailroad 11
street, and he had one with me. He and Mr. Unger sepa¬
rated, and afterwards he and Mr. Unrrington separated, and
men I came in with Mr. Edison, under tho head of Edison
£ Murray.
Q. These settlements continued between Harrington, on
dbo side, and Edison & Murray on the oilier ?
A. Yes.
Q- Eor what period of timo ?
i bfp to the last transaction wo bad with the Automatic to
company, previous to its being sold out.
When did you begin under tho title of Edison &
durray?
A. Sometime in October.
Q- Of what year ?
0 mi1878’ 1 thin.k : lll° books wi» 3how.
lidn’t ICn ^°U sn'd Oioro were three partnerships you
10 exPress y°ur opinion that tliese partnerships
_ _ „ wbl 0 tbe firm of Edison & Murray was doing busi-
A. No, sir; lie had .severed with Mr. Harrington
time.
Q. And then afterwards with Mr. Unger I
Q. And afterwards still with yourself?
Oross-examintilion hy Mr. Butler.
Q. When you first went to work with Mr. Edison or Mr.
<j Edison and Harrington, where were you employed ; I mean
in what building?
A. 100 Bailroad avenue; thcro were several numbers to
the building; it was rather a long building; there were 105,
107, 100 and 111, I believe.
Q. You went to work in 100, and that was a shop for
manufacturing ; was it?
A. Yes.
Q. And what instruments wore there manufactured?
Please state a little in detail.
£ A. We manufactured stock printers for the Gold anil
Stock Telegraph Company ; that wns one article, and then wo
manufactured electric ventilators for Dr. Stoutonburgh, of
Now York, and other articles ; we manufactured a variety of
different instruments, also, for the Automatic Company.
Q. The business of tbut shop wns simply mechanical
manufacture, wns it?
A. Yes.
Q. And you worked at that with Mr. Edison and Harring¬
ton until 1871, when Edison left; what time was that in
15 18717
' A. It wns October 28, 1871.
Q. Then during that timo lmd Edison any shop or place
where he worked himself sometimes, making experiments?
A. Yes.
Q. Where was that ?
A. It was close to the canal, in Newark.
Q. Unfortunately I am not sufficiently well acquainted
with Newark to know where the canal is. Pleaso stato a
little more definitely.
A. It is about a half a milo from whore Mr. Harrington l
and Mr. Edison’s shop was.
Q. Then there were two shops that you have described;
one at 10!) liailroad avenue, and then Mr. Edison had a
shop where he carried on bis experiments ?
A. Yes, sir.
Q. His experimental shop, ns you may call it?
A. Yes.
Q. How many man were employed nt 109 ?
A. They vnried from ton up to fifty. *
Q. According to the state of business? 1
A. Yes.
Q. How many mon had Mr. Edison in his shop near the
canal ?
A. lie usually kept two. *'
. Q. And that stato of things continued down to October
28,1871?
A. No, sir ; not tho experimental shop ; that was for his
personal purposes.
Q. Did that experimental shop continue until October
1871? 1,
A. No, sir.
U- When did ho quit this experimental shop?
A. Tho experimental shop was m existence probably
three or lour months.
Q. Whore did ho go thon ?
A. Then lie wont with Mr. Unger in tho Bailroad nvenuo
shop, about a quarter of a milo or nearly that from 109
Bailroad avenue shop.
Q. That is, if I understand you. 1m then made some
sort of a business arrangement with Mr. Unger, having a y;
shop about a quarter of a milo off?
A. Yes; but ho wns in business with Unger before ho
was in business with Mr. Harrington.
Q. Did that business with Mr. Unger continue while ho
• was in business with Mr. Harrington ?
A. Yes.
Q. And Mr. Edison quit his experimental shop and wont
in the shop witii Mr. U nger ?
A. Yes.
140 Q. And continued Ins experiments thoro 7
A. Yes.
Q. How long did that arrangement, undisturbed, con¬
tinue with Hr. Huger 7 )^\ V 1 41
A. It continued until somo time in 1873, I believe.
Q. What time, as near as you can state, did Mr. Edison
leavo the manufacturing shop at 100 ?
• A. IIo left October 28th, 1871.
Q. At that time ho was in the shop with Mr. Unger ?
A. Yos,
141 Q. Was not tho troublo why ho loft tho shop in Railroad
avonuo bccauso Mr. Harrington put in a superintendent
over him in the manufacturing ?
A. Ho superseded him, yos.
•''■Q. Mr. Clark superseded him as superintendent ?
A. Yos.
Q. And thereupon Mr. Edison declared ho would have
nothing more to do with tho manufacturing, didn’t ho 7
A. Ho did.
Q. And loft Mr. Harrington to carry on his nmnufactur-
142 ing undor his now superintendent as ho plensed ?
A. Yos.
Q- Did you leave when Mr. Edison did, or did you ro-
t away tho saino day.
Oft With Mr. Edition ?
Q. You left with Mr. Edison ?
A. Yos.
Q. And wont to Mr. Unger’s shop 7
A. Yes.
, J3, !>>’ tho firm of Edison & Ungor in tho
143 Unger shop 7 °
. milki"S printing instruments for tho Gold
and Stock Telegraph Company.
Lh. , if Q- Any other business 7
-S' ^tholuTsmess done in\ho imw shop of Unger 4
■o with them, was tho making of tho
Edison, while you w..„ ,
Gold and Stock Telegraph instruments 7
A. Yes, principally.
Q. That was what was being manufactured, and besides
that there was experimental work going on 7 1
A. Yos, always.
Q. Mr. Edison continued his experiments during tho
whole time?
A. Always.
Q. Mr. Edison claimed tho Gold and Stock Telegraph
inanufnctu ail what thoro was belonging to it as his own
property, didn’t ho 7
A. No, sir; ho shared it with Mr. Ungor.
Q. Ho claimed it as his own property, and therefore i ,r,
shared it with Mr. Ungor? (I
A. Yes. )
Q. And ho and Mr. Unger wont on with that manufac-l
taro? "
A. Yes. r - >
Q. They continued down to 1875 7
A. I believe so.
Q. 'When you took Mr. Ungor’s plnco 7
A. I did.
Q. As partner?
A. Yes.
Q. And mado tho same terms, so far as you know, that
Mr. Ungor had mndc with him before?
A. I was a partner with Mr. Edison previous to that my-
solf, and whon I wont in there I supposed I was to have an
interest as an equal partner with him.
Q. You wont in with him as a partner 7
A. Yes.
0- In what particular business wore you as his partner?
A. Manufacturing tolegraph business.
0- Any otlior business than that?
A. No, sir.
Q. Such instruments as what 7
A. Principally gold nnd stock and automatic machinery.
Q. Whenever Mr. Harrington wanted any automatic in¬
struments, models, etc., manufactured, ho came to that shop
for them 7
A. Wo made thorn for him.
0- And he paid for thorn from timo to
Q. How wore these payments made— principally through
Mr. Edison or to you?
A. It varied ; sometimes it would come to me personally,
sometimes to Edison, sometimes for tlio shop and sometimes
f0>' experiments; it was charged under different heads.
Q. When you got an order it was sometimes charged for
automatic?
A. Yes.
Q. And was accounted for on the hooks and carried to
149 Harrington's account ns payments made on account of manu¬
facturing sometimes, and sometimes on account of experi¬
ments ? Von put it down in the hooks ns it was designated?
A. Yes; 1 kept tho books
Q. The experimental pnrt was for Edison and tho auto¬
matic part was for you, share and share alike ?
A. Yes.
Q. And that condition of things continued to the time
when Mr. Harrington asked yon about seeing Edison?
A. Yes.
150 Q- -And that was about what time? I want to get at the
date as near as yon can tell mo.
• A. I boliovo that was in the fnll of 1878.
Q. Was itnbont October when you had this conversation?
A. No ; it was not in tho fall ; it was before Edison went
to Europe.
Q. When did he go to Europe ?
A. no went to Europe some time in April ; it was prior
to his going to Europe; lie returned in Juno.
Q. Then it was about the first pnrt of April ?
101 A. It was previous to that; I cannot fix the date pre¬
cisely.
Q. It was before April, 1878?
A. Yes.
Q. Tho question with Harrington was, if I understand,
whether he could get Edison to come back and take charge
of the automatic?
A. No, sir.
Q- What was it?
A. To take cbnrgo of tho Automatic Telegraph Compnny
Q. As electrician? 162
A. Yes.
Q. You told him to go nnd sco him?
A. hirst I told him I didn’t think he could get him back,
except bo would give him entire control, so that he would
uot be hampered as ho had been in the past
Q. llefcrring to Clark being made superintendent?
A. Yes.
Q. Clark must bo removed from ovor him, or else he
would not come with him?
A. lie must not be hampered in any way. 168
Q. What did Mr. Harrington say to that; did ho say ho
would tako Clarke away?
A. 1 believe he corresponded with Mr. Edison, nnd finally
made a settlement.
Q. Did Clark tako any other position?
A. No, sir.
Q. Then, Mr. Edison went back nnd took cbnrgo of tho
works?
A. No, sir ; not in Newark ; ho took charge of tho office
in New York. 151
Q. He took charge of tho whole lino in Now York nnd all
A. Yes.
Q. Now, in tho meantime, did Mr. Edison carry on his
experiments nnywhero else but in that shop?
A. No, sir.
Q. State whether Harrington was paying, from timo to
time, money on account of tho experiments.
A. Yea
Q. To what date did that continue? 166
A. I cannot exactly fix tho date, but tho books will show ;
Mr. Edison has the books, and they will show tho dates pre¬
cisely.
Q. Didn’t it coutinuo down to tho summer of 187-1?
A. Yes.
Q. Didn't Harrington pay Edison money, on account of
experiments ho was carrying on, down to July, 1874?
A. I think ho did.
Q. Arc you suro about that?
y, wlien lie went for it, from that I
Q. And that slate of things continued the whole time;
whenever he went for money to hlr. Harrington, he would
get it?
A. Usunlly.
Q. And tlmt continued down to 1874, in July?
A. It continued ns long as the line was in existence—
until it was transferred.
Q. Then that state of things continued elenr down to the
01 union of tho two lines?
A. Yes.
Q. Stato whether, at the direction of Edison, you called
on Mr. Harrington, at any time, to ask Ins consent that Edi¬
son might sell quadruple* ami duplex.
A. No; I never went at tho request of .Mr. Edison, hut 1
assumed that responsibility myself.
Q. You assumed the responsibility, and went to Mr. Har¬
rington as a friend of Edison's?
58 A' Y°S'
Q. To got him to consent to tho salo of tho quadruples
and duplex ; when was that ?
(Objected to as immaterial ; admitted.)
A. I cannot tlx tho date precisely.
Q- As near as you can?
thifwmin18 ‘t?™” l° ^ison "‘“king an engagement with
imTZu'r ?nT',y’ °tahou' time 'he was ne-
59 fe q , w,th theln for the sale.
tlmt of wldeh l’"tC,Sthnt Imvo bocn fixo‘l
as nearlv ns V J know nothing; please fix the (Into,
as nearly as you can, by uhnnnao.
o' vT 1U t1871' but timo I cannot state,
the Tima about °U’ • ^ y°U 800 nrticl°
41
A. I cannot recollect precisely the date; I would not 160
undertake to fix tho date.
Q. Can you tell whether it was before or after, or about
that time?
A. I cannot say.
Q. It was sometime in tho summer of 1874?
A. Yes.
Q. Warm wentber ?
A. I think it was.
Q. Whore did you meet Mr. Harrington?
A. I went to tho Clarendon Hotel ; I saw him myself. 161 .
Q. Did you, find him ?
A. Yes. •
Q. Did, you finish your conversation with him there?
A. With him ; yes.
Q. Now, will you state, as well ns you can, just what you
said and just what lie said?
A. I told Mr. Harrington that it was essential that Mr.'
Edison should Imvo some money for n spccinl purpose ; that
ho had done Mr. Edison great injustice not to allow him to
sell that system to tho Western Union Telegraph Company, 162 1
so that ho could get tho money which ho conld not at that
time furnish. His reply to me was, that, as far ns ho was per¬
sonally concerned, ho would do everything he could to assist
Mr. Edison, and would not put any obstaclo in his way
whatever, but that thcro were other parties who might raise
objection. Ho says, “I have a contract with Mr. Edison,
and I wish you would go down to tho ofiice and rend it."
I did so, and Mr. Eeift’, who was interested with Mr. Har¬
rington, gave mo that agreement with Mr. Edison to read, ,
which I road. 163
Q. You rend tho agreement; now there wero two agree¬
ments ; I would like to know which ono it was you rend ;
there wns one of 1870 and ono of 1871?
A. I have never seen but one ; I never know that there ,
wns more than ono in existence.
Q. Which ono wns it that you saw ?
A. It was one that covered all of Edison’s inventions
other than wlmt related to the Gold and Stock Telegraph
Company, and tho printing instrument
Q. Can you state whether it wound up with a power of
attorney for Harrington to sell ?
A. Yes.
(Handing witness deed of April 1, 1874.)
Q. Is that the one you saw 7
A. I cannot swear; I could not swear positively.
Q. Look at the wording of it and see if it is the samo as
the one yon rend, from your remembrance of it?
(Objected to. Admitted.)
Witness reads paper.
A. That is the substance of it.
(Handing witness partnership agreement of Octobor,
1870.) 1
Q. Look at this, and see if you remember this more dis¬
tinctly ?
A. I believe that is the original document that Mr. Iieiff
gave mo to read,
Q. This is the ono that you saw ?
A. Yes, sir.
to see "it?"" C"'"0 3°U t0 E° d°"'" l° tl)0 offico of Mr> liciff
A. Mr. Harrington told me that there was an arrange-
jil i,n!ai1' 111 rcSard to these things; that bo personally
have mV° aI^' 0^eollo‘,i l*ut that other pnrticB might
tl- His associates?
•A. Ye?, ami be wanted in
sec the paper.
hel?;rtd0'V" tl,ere Md ^ Beiff there, an
ac gave you the paper to read ?
A. Yes.
that came intn ' WI,S,n 'nr°° "u,nberof payments I su|ipoi
A. Yel 3'°Ur S,'°P fr°,n Mr‘ Barrington ?
ie to go down to tbo ollioe and
Q. Hundreds? pgg
A. Yes.
Q. Wbero it wns on account of experiments it was
deemed to be a porsonal matter of Mr. Edison’s ?
A. Yes.
Q. And whore it was on other accounts it was deemed
yours and his ?
A. Yes.
Q. Let mo show you a speeimon of ono of the accounts.
[Handing witness papor.] Look at that paper and say if 169
you over saw that before ?
A. I have.
Q. Did you sign it? •
A. I did.
Q. At tbo time it was written ?
A. Yes.
Q Who brought you tbo money ?
A. Usually it was Mr. Reid's ebook.
(Roads papor in ovidonco. Marked Ex. X.) 170
Q. " Kirk, rent ; ” what wns that ? It wns not for tbo
rent of n Kirk.
A. That was tbo landlord of tbo shop on Railroad street,
nnd tbo reason I put that in thoro was to show what it was
for so as to protect myself.
Q. You bad a shop on Ward street, Nowurk ?
A. Yes; that one went out of sight about threo months
after it commenced ; thoro is only ono shop thoro now.
Q. This wns in regard to tbo shop of Edison <!c Murray ? 171
A. Yes.
Q. It went to pay tbo rent of your shop ?
A. Yes.
Q. That is, Edison got so much monoy from tbo Tele¬
graph Construction Company, and you appropriated tbo
money that way ?
A. Yes.
Q. I will show you another one. [Handing witness a
paper.] Did you over sco that before ?
45
(Kuacls paper in ovi.lencc. Marked Kx. Z .,)
you p^ Sr “«*> ‘o Mr. Harrington, did
A /,! [‘lauding paper to witness.]
tr 1 raaotvod that money. J
173 J^'taM-lUiowcoipt?
j (Paper referred to marked Exhibit 55 ».)
vem'ion? y°U °1,,im °f Mr’ Elliso“ any interest in his in
A. None whatever.
A. “tend to that at all 7
174 peoplo nbouV?iiml*V* ^00n ‘n Partnorsliip with twenty
P«nnor5 wiuiy,VO,,ti°,,S disturbing you?
A. Yes.
Q- It has been suggested to * i .
Giving those rceoints fori? i- to ask you whether, in
that was to go for Edison L“80" ‘)or30"nll-v> or for ",one7
“i: s::.a, r « ”• ™
sonally for him jusTnow?U roooipt01* r°r ®“ money per-
176 2.^7°“ any right to do so 7
A. Not by him IUltllorizocl to do so, wore you?
J Who did authorize you ? '
"nd " Y°“ “an £o to SrSkLt ?'° V«ory to n,o
and got so muoii monoy
from Mr. Keiff or Mr. Harrington," which they would liavo
all ready lor mo, and I would give a reeoipt for it. ^
Q. That is to say, whilo you had no general authority, lie
would send yon to New York to got monoy ?
A. Usually.
Q. Personal monoy?
A Yes. _
Q. Was there anything over said to you in any form by
Mr. Harrington that his partnership, so far as inventions
went, was not in full strength with Edison’s l
A No, sir. .
Q, Did ho over intiinato anything of that sort to you in
any shape, form or manner ?
A Never. . !
Q, Yon wore short of monoy to carry on your shop, amt
you went to Mr. Harrington about the selling of tho qua-
druplox ?
rmngemcnt eouhl bo made?
A Very likely it was.
npted you to go and see if any
Ke-dind examination :
Cl Did Mr. Harrington over have any conversation with
you upon tho subject of whether or not tho partners up
Edison in tho inventions was dissolved ?
t Ho no'vor said yes or no to you on the subject, because
you never talked with him about it ?
Q. You have boon shown a bill for ton models whio
been mnrlcnd K\- Zfl What woro those models !
A I cannot tell you now ; wo made so many that canno
S‘ the genera, range of your memory were they
hot models relating to thcautomntic tolograpur
40
47
180 A. I would not bo positive on that point ; the books will
show Hint.
Q. Hnvo you got the books ?
A. Mr. Edison 1ms thorn.
Q. You wero paid for thorn $250 ?
A. Yes.
Q. Mr. Harrington paid you money for them, and had
previously given you an order ?
A. Yes.
Q. And that order is now in oxistonco somowhorc, isn't it ?
181 A. Yes, sir; on the books.
Q. Mr. Edison 1ms the books !
A. Yes.
Q. Did you over mnko nny modols relating to the quadra-
plexor duplex?
A. Yes.
H- \\ ore, by chance, tlicso among those ?
,ni7,“"W not Slll positively ; I would not undertake
sny about that
180 5 m°" 3’°!1 di(l mako ‘1'in‘lruplex models, had yt
.182 mademiy as early as the date of this order in the sum!
A. Yes, previous to that.
A- Edisoir °nl0rtlid you nmko tho qwedruplex models
Q- On his personal order?
A. Yes.
A. No, sir ^ lran'inston’s ordor?
A. Hint I could not say.
mndo tboso quni,ru
Arrington 7
inoss with EMison;\oT1Sndbln8,1'VOrOOUtSid00t "'ybU3
usually had his mn, „i beou a Partner with mo ; he
s made at tho shop which he bad for
experimental purposes and which I had nothing to do with, 184
and which lie directed himself.
By The Court:
Q. Did anybody order duplex and qundruplex models
besides Edison ?
A. Not to my knowledge.
By Mr. Lowrcy :
Q. Givo us tho date, ns nearly as you can, when you mado 185
any of these qundruplex models that you hnvo spoken of ?
A. I boliovo it was previous to Edison going to Europo ...
in U73.
Q. Look now at this bill, marked Ex. Zs, and state when
tho modols for which that bill was rendered wero made?
A. Tlio probability is that they had been worked upon
for some tiino previous ; they must havo been.
Q. Was it during the year 1874 ?
A. Yes.
Q. Now, about this receipt for $1,800. In whoso linnd- 186
writing is the body of it ?
A, That is tho writing of Mr. HcilT.
Q. Now, you received that money and applied it to tho
payment of a loan for which Mr. Edison was liable with
yourself ?
A. Yes.
Q. Had you nny reason to boliovo, or did you at that
time know whothcr that money was loaned to Mr. Edison,
Jr upon what account ho got if?
A. I cannot toll thnt. 187
Q. You only know thnt you received the monoy at the
I samo time you signed this receipt?
I A. Yes ; I gnvo Mr. Edison credit for thnt on tho
Shooks.
[ Q. You gavo Mr. Edison credit for tho monoy ns pnrt-
Lner?
| A. Yes, for tho 81.800.
K Q. On tho books of Edison & Murray?
U A. Yes, sir.
..JGSEKses
48.
188 ' ■ Q. You have spoken about these different accounts for
experiments mid for other things. "Will you state tout
wlmt the account was for which you made the chnrges lot
experimentation ?
.A. That belonged to Edison personally.
Q. That is to say you had an account which you charged
to Air. Edison personally the costs of the experiments made
by him ?
A. Yes, sir.
Q. These experiments wore being made by Air. Edison
180 >n >"egartl to inventions that wero made and to be made?
A. Yes.
Q. And you had no partnership in that and you charged
Mr. Edison for the services of the firm nnd for its macliincij,
atid its ndvanccs when employed for the purposes of these
experiments?
' A. For stock nnd labor.
Q. bo you know whethor any experiments were made
by Mr. Edison especially for the automntie company?
A. Yes.
)0 " Q. And having relations to the machines which you
building or about to build?
A. Yes.
Q. To whom did you charge such experiments?
A. Edison, usually.
Q. Ever to the Automatic Company ?
A. Sometimes; yes.
irVv1,01,1 you smv lVr' Harrington at the Clarcndoa
Hotel, did he assert that Mr. Edison had no legal right to
Q. State all that Mr. Harrington snid
the subject of his rights, or any claim
against Edison, effecting the quadruple;
lions, on tins occasion ?
■A. Tho conversation I had with him was
thimrViTif ' 1,0 t0'i* mo' Person|dly, ho could not put nnj
anv°sonr 10 °£, llr" Kllisons receiving assistance fron
nrohiMv?- /i"1 , 1,0 wns Associated with others wbi
probably might, and referred me to this agreement, whirl
you relating to
right by him u
r duplex inven-
ns very short am
40
wns in the office of Mr. Roiff, and I went to see it at the yg2
office, No. 80 Broadway; he told mo to see Mr. Roiff, nnd
to get the document and rend it, and bo guided by it.
Q. The occasion of your visit to Mr. Harrington wns to
relieve your friend Edison, and without his knowledge, as I
understand you ?
A. Yes.
Q. From a financial pressure at the timo ?
(Obj’eoted to as leading.)
Q. Wlmt wns the financial pressure to which you rofor? jgg
A. It wns a railroad somowhoro in Michigan.
Q. Hnd you reference to a mortgage on tho shop in
Newark?
A. No, sir.
Q. I call your attention particularly to tho timo when Mr.
Edison wanted money for tho railroad in Michigan, nnd
asked you to soo Mr. Harrington. Aftor this visit to .Mr.
Harrington, did ho go out to Michigan to nttond to his rail¬
road?
A. He did. m
Q. Within a short timo after?
A. Somo few weeks.
Q. Or about a month ?
A. No, sir.
Q. Now can you, by the help of that visit to Michigan
fix tho time that you called on Mr. Harrington more clearly
than you have fixed it?
A. No, sir ; I cannot fix the date.
Q. Ho you remember tho circumstance of Mr. Edison's
making the contract with Mr. Gould in relation to his inven-
tions?
A. I do not.
Q. Ho you remember anything about the breaking out of
difficulties between Mr. Edison nnd tho Western Union
ns?
A. Yes, sir.
Q. About, with reference to that time, when was it that
you called on Mr. Harrington, or that Mr. Edison went to
Michigan? 7
60
1P8 A. Ho lias been so many times tlmt I cannot exactly fix
tlio dato that ho went on this particular occasion ; lie Imd to
go about evovy tlirco months.
Q. Did lie liavo these money troubles every tlirco months,
or was this a special occasion ?
A. lie did linvo these money troubles about every three
months, but this was a special occasion.
Q. This was a speoial money trouble ?
A. Yes.
Q. Do you know whether at the time you called on Mr,
Union Telegraph Company somo money?
A. I do not know.
Q. You did not know anything about bis affairs in that
respect at that time?
A. No, sir; tlioy worn personal matters relating to him-
soli alono.
Cl Didn’t you toll mo the other dny that it was only re¬
cently you lmd learned of tlioso paymonts to him V
A. Yes, sir.
8 Q. The i work which you have spoken of ns having boon
done for Mr. Harrington, did it, in any considerable dcgrccc,
ii.Sd”," ‘"“E to" °w»
10 avt,cGCn0ral ,U11°rintenil0nt o£ tho sll°lh MO Bail road
tboahop?8 1,0 0V01 romovctl from t1ic suporintondonoy of
A. I cannot say,
diSn^r n,18";0,'0tl GonomI Butler that one con-
' S ‘he removal of Clark front control, you didn’t
mean that Clark bad any control ovor tho Automatic Com. 200
jinny, and was to bo romovod for that reason ?
A. No, sir.
Q, Ill conversation with Mr. Harrington, concerning which
you linvo testified in answer to General Butler, and which
related to his removal of some control ovor Edison, you had
no roferonco to tho romoval of Mr. Clark ?
A. No, sir.
By the Court : Clark was at tho automatic sliojt which
Edison went to ? 201
A. lie was at tho automatic shop hut not at the company’s
ofileo on Broadway, where Mr. Edison wont.
By Mr. Louirey ; You liavo spoken on your cross-oxamin-
ation of tho terms of tho jtartnorship botwoon Edison and
- Unger as being the siuno ns tlioso botwoon yourself- mid
Edison; do you know anything about the terms of tho
partnership botwoon Edison and Unger of your own knowl¬
edge? 202
A. Yes.
Q. Did Mr. Edison when ho wont away, in stating that lie
would not have anything moro to do with tho matter, use
tlie torm “ manufacturing?"
A. No, sir.
Q. What did ho say?
A. I remember tho words that ho used in his conversa¬
tion with mo; ho said, “ that ho felt like an old coat that
had been used until it was worthless and then hung up."
Q. What did he say about his going away ? 203
A. Ho said tlmt tlioy had violated their part of tho con¬
tract, which would roliovo him from his part, and ho would
liavo nothing more to do with thorn.
Q. And that is all tlmt you aro able to remember tlmt
lie said. He didn’t use in tlmt connection tho term “ manu¬
facturing?11
A. No, sir.
Q. Did you ovor repeat to Mr. Harrington
Edison said about going away ?
what Mr.
204 A. Yes, sir.
Q. 'When?
A. When I find the conversation witli him in regard to
getting Edison bade.
You than told him what Mr. Edison hnd snid ?
A. Yes, sir.
lie-cross :
Q. At the time Mr. Edison said thoso things to yon,
didn’t lie also mnko it a part of his complaint that they had
205 put this man Clark over him, and didn’t give him full
chargo ?
A. flint was the solo foundation of the whole trouble.
Q. And that was what ho called a violation of his agree¬
ment, wasn't it?
A. Yes.
Q. By doing that ho thought thoy hnd violated his agree¬
ment with him?
A. Yes, sir.
Q. Did you hnppon to see, in tho agreement that you
200 wad, anything to tho olToot that they should not haven
superintendent at tho shop ?
A. No, sir.
lie-direct.
Q. When you say that that was tho solo cause of tho
disagreement you don’t profoss to know absolutely all tho
arrangements between those partners, do you ?
t0 me Plainly that he was ember-
m sed and hampered, and would leave on account of these
20? other parties superseding him.
Q- But lie didn’t say at the same timo that ho had no
other cause of complaint?
A. No, sir.
Q. Did ho claim any other?
A. No, sir
amfaedf ^ °nllt 1 1 * defendants, sworn and c
By Mr. Lowrey : 2Q8
Q. You l-csido in tho City of Now York?
A. Plainfield, Now Jersey.
Q. You have an office and place of business in this city ?
A. I have. ’ 3 '
Q. You. are a solicitor of patents?
A. I am.
^ Q- Bo you know Thomas A. Edison and George Earring-
A. I do.
Q. And George B. Prescott? 209
A. I do.
Q. Previous to 1870, hnd you some relations with thoso
ongaged in exploiting what is called the Automatio Tele¬
graph Company?
A. In 1870, or a little before that time.
Q. With whom or in connection with whom?
A. In connection with tho National Telegraph Company.
C2. That company was working, I believe, upon tho
patent of Mr. Littlo?
A. I enino in contact with Mr. Littlo almost exclusively, 210
and it was with him that I did tho business.
Q. Wore thoy working upon what is called tho Littlo
patent?
A. Thoy wore arranging to work them.
Q. Afterwards did tho persons who were ongaged in that
business como, to your knowledge, into some business rela¬
tions with .Mr. Edison and Mr. Harrington ?
A. Thoy did.
Q. At that timo what was, if you know, tho occasion of
their coming togothor in rospoot to tho business? 211
A. I know there was a contract existing between Earring-
ton and Edison, and in connection with that I acted in pro¬
curing patents for Mr. Edison’s inventions?
Q. This related to tho automatic telegraph business ?
A. So far as I knew at that time.
Q. Did you advise Mr. Prescott and Mr. Edison in tho
preparation of tho agreement of August 19, 1874, relating
to thoso patents that are now in controversy hero?
64
212 A. I did.
Q. Did they consult you upon tho subject whother or not
they should under the luw be treated ns joint inventors?
.A. They did.
Q. Did you inquire into the facts relating to the innttorin
regard to these inventions and their relations of those persons
to them ?
A. It may bo prcferablo to state the circumstances th
led mo to inquire into that patent Early in 1874 I had liu
an interference in the Patent Ollico by two parties claiming
213 to *)0 j°'nt inventors, and tho testimony developed the fact
that only one made the invention. When Messrs. Prescott
and Edison came to mo, I thought it possiblo that tlicso gen¬
tlemen might bo mistaken as to tho conditions of getting up
these inventions, and I sent for Mr. Edison and I said, sup¬
pose any question should arise in tho future as to whether
this patent is properly in the name of Edison or Prescott;
and I told him he had bettor talk the matter over with Mr.
Prescott They talked the matter over together in mv pres¬
ence, and upon discussion it appeared that it would be more
2M proper to put in the application in the singlo name of Edi¬
son. Mr. Edison had helped to develop the invention in
suggestion as to minor details, but not so far as the subject
matter that was proposed to bo claimed.
Q. And upon that yon advised them, as you have stated,
that thoy could make their application for tho invention of
Edison?
A. Precisely.
Q. And applications were mndo under the terms of this
paper of August 10th?
215 Applications were made after that paper had been
prepared, i’lie paper was changed, or, rather, there was a
now paper prepared to lake the place of a former that had
been signed.
Q- Applications wore made after the advico you gave
hem ,,, accordance with the tprmsof the paper executed on
the 10th August?
A. There were.
You foui,a ll,at there was another paper which had I
been executed previously ?
ills §§ It. :
66
A. Tcs, sir.
Q. That had not been put upon record ?
A. Not that I know of.
Q. What dal you understand that thoy did with that
paper after your advice to them ?
• (Objected to.)
Q. What did thoy do with it?
A. I gave my advice to prepare another to take tho place
of it, which was prepared containing substantially tho same
statements as tho original, only making it with tho nnmo of
Edison ns the inventor, instead of Edison and Prescott.
Q. You continued to act with these gentlemen, thou, dur¬
ing that time, until how long?
A. I am not nwnro but that I still stand in that relation,
although there was a notice served upon mo by Mr. Edison
that, on his part, I was no longer his attorney.
Q. You reudered bills aftor that time?
A. I did.
Q. To whom?
A. To Mr. Prescott 21
Q. What was dono with tho bills you rendered to Mr.
Prescott?
A. They wore paid.
Q. To what did tlieso bills relate?
A. They related to tho preparation of the applications for
the patents from 94 to 100 ; they also related to some ac¬
counts which had existed before Mr. Prescott becamo con¬
nected with Mr. Edison.
Q. When thoy became connected thero was some bills re¬
maining unpaid? 21
A. Thera wore, and thoso wore included in tho bills that
I rendered to Mr. Prescott, and that ho paid.
. Q. Do you remember to wliat thoso bills related ?
A. They related to a caveat of Mr. Edison, also to ex¬
penses for procuring some copies of tho onscs A to H, or A
to G, I think.
Q. Who paid them ?
A. I believe tho first bill was paid by check of the
Western Union Telegraph Company.
56
220 Q- From whom did you receive it?
A. l<’rom Mr. Prescott.
Q. You sent (lie bill to whom?
A. To Mr, Prescott.
Q. Did you have any dealings with the Western Union
Company as your client in this business?
A. I did not at that time.
Q. In answer lo the bill you sent to Mr. Prescott you got
a cheek from tho Western Union Company ? '
A. I will not bo positive about that, but that is mv re.
221 collection. J
Q. In your account who did you credit with that cheek?
O An!", 77, "Tl" 11,0 nnme ofPr“Cott & Udison.
J A Her that how did you receive payments?
cheek ^ °"° i"St!mC° 1 romcmhcrMr. Prescott sent his own
Q. Since tho date or the agreement of August 10th have-
you done anything on account of these inventions ? ’
A. winch inventions?
Q. These which yon have described us mentioned in the
222 P"P°r of August 10 ? mentioned in the
n Muh"VV'n reco)lectio» ^ anything else.
Q. I hose bills have all been paid ?
A. Yes, sir.
asked him to look into them and sco if they covered the 224
quadruples
Recess.
Afteb Recess.
Tho question peuding beforo the Court at recess was
taken up.
Ur. Lowrey: I would say, if the Court please, tlintl linvo 225
inquired of witness, since he left the stand, whether he was "*
a member of the bar, and ho said ho was not.
The Court: I was about to suggest that tho discussion has
proceeded upon tho assumption that the point of privilege
was clearly raised, and undoubtedly, as I proposo to rest
my ruling on that point, the record should present that
question clearly and distinctly. Therefore I think it proper
that such a question should bo put.
Ur. Butler: I do not desiro that that question should bo 220
asked at this moment, for tho reason that I have assumed
that the witness was a member of the profession ; but if
your Donor should rule the question in on the ground of
its materiality, tho next proceeding would be, I suppose,
that we should be permitted to oross-exatnino to ascertain
what the professional relation was.
223 !lr <*** on 'he ground that the con-
"Srccment, under which they took
mil at Z I rlS ,h° dc“°„8 ll'° grantor
^relation of attomeya^i^'1"1’ * rCl",,S ,0
wrote a hitto wl °|!Cr ,l° Prove tl,nl Mr. Harrington
on the subject of ihZ 10 CUCr °‘ Ju)y 9> 10 tl,is witllcss-
J of these contracts, or alleged contracts, and
The Court: That is exactly what I should have sug¬
gested, had Mr. Lowroy mado no point about tho matter.
Tho objection is taken on tho ground of privilege. Now,
tho questiou, as it stands on the record, docs not clearly
raiso that point. The record can be added to so as to pro¬
scut the poiut distinctly.
Ur. Lowrey: If it appear that tho relation docs not exist
at all of attorney and client, is thero any object in pro¬
tracting the discussion? It was assumed, and I supposed
conceded, and I was about to ask to knvo ' tho record so
8
nog enlarged ns to present the point distinctly. If tlioro is any
doubt about the fact, it bad better be ascertained before wo
proceed further, or to devote more time to the discussion of
the question involved.
Q. Are you a member of tbo bar ?
The Court: You are not a practicing lawyer?
A. No, sir; I prnotieo in eases on appeal from tbo Com¬
missioner of Patents to the Supreme Court.
229 Q- That business is known ns the soliciting of patents,
and acting ns a patent agent?
A. Yes.
Cross-examination by Mr. Butler on privilege.
Q. You have been employed to solicit a number of theso
patents of Harrington and Edison for a series of months?
A. For years.
Q. You lmvo noted for both of thorn ?
230 A‘ Yes' sir'
Q. They wore patents whieb form a part of this sorics
which are in dispute?
A. I might stato briefly that I obtained patents for Edi¬
son beforo I eatne in contact with Harrington.
Q. Then you went on with Harrington ?
A. Both eatne togother.
Q Your business has been to present questions of patent
law nt the Patent Office if they arose, and arguo them if
necessary ; to give advice to your client, etc., and also to
231 nrSuu d‘B questions before the Supreme Court of tbo District
of Columbia in oases of appeal?
A. Yes, sir.
Q. That was known to Mr. Harrington ?
A. It was, except so far as tbo appeal to tbo Supremo
Court was concerned ; I don’t know that be knew that.
^ Butter : I admit that the question of privilege arises
The Court: Lot us have the record in suoli slinpo as that 282
tho present will bo distinctly- presented.
Mi. Lowretj : I now proposo to clear up tho result of tbo
answers made to Gou. Butler.
Q. You have been asked whether you solicited tbo pat¬
ents or gnvo advice to Harrington and Edison together con¬
cerning this particular series of inventions. Did you evor
act for Messrs. Harrington and Edison together in respect
to eases A to H, 04 to 100, 111, 112 and 118?
A. Not until about the end of 1874 or tho early part of 233
1875.
Q. Did you then act for Harrington and Edison toge¬
ther?
A. Not directly for them, but thoy both canto to consult
me on thoso cases, and together.
Q. It was with roforcnco to their appealing to tbo Com¬
missioner of Patents not to issue tho letters patent to Edison
and Proseott ?
A. In that gonoml connection.
Q. It was after this difficulty bad broken out bctwcon 284
Proseott and Edison ?
A. Yes, sir.
Mr, T.ouircy: 'l'his witness has bad no relation with thoso
gentlomon in respect to tho patents in controversy. Tbo
ovidonco wo are going to addueo has no 'relation to thoso pat¬
ents. Wo are about to show what this gentleman said wbon
bo was asked to givo bis opinion about a certain paper.
Mr. Sutler : I still insist that this oaso is within tbo ques¬
tion of privilege, ns it nppears in tho record. 236
The Court: Tho only question is ns to whether or not a
solicitor of patents, occupying the position and relation whieb
this gentleman occupied, is nt all within tho privilege, be¬
cause on tho other point I am with you. Tbo authorities
of our Court of Appeals, I think, sustain tbo view which I
have already expressed.
Mr. Butler .- I want to say a word as to tbo ret inter alios.
286 This witness is one of tho defendants. Ho appears before
the Commissioner of Patents to procuro patents anil before
the Supremo Court of the District of Columbia to argue
cases on appeal. He is an attorney at law of a specific kind
and character — a branch of tho profession which lias grown
up recently. When a man is consulted as a lawyer and as j
dealing with a specific branch of the law, where a lawyer '
lipids himself out as a lawyer, and where the Court recog¬
nizes him as a lawyer and deals with him ns a lawyer, he?s
fairly within the privilege. I submit that this question
287 ought to bo hold within the fair equity of the rule. Upon
tho other point ns to whether a lottor written to ask tho ad- I
vice of a party ns to tho construction of a deed can bn put j
The Court: Wo liavo not that question before us now.
Ur, Butler: Then I was misled by tho argument of my
brother Porter.
88 . ll!,‘ <'0U' t 1 r^'° (luost'on relates sololy to tho convene-
. tion.]
Ur.Uyere: There are several rules of the Patent Office
which recognizo just such persons as Mr. Sorrell to practico
botoro tho Patent Office and arguo just such matters as ho
was consulted about referred to now, beforo tho Court
tion?]°U1,Sel quotod rul° 181 nnd ot,lers t0 sustnin his i)03i;
t„bVh™n w"a in 1,10 House of Bcprosontntives netiou was j
3,9' .If0" "'t i P‘!,ont ®n‘00 ns t0 preventing persons who were
nm Tfr y ""Uod nttomoys from practising in tho Patent it
0 ice. I for one opposed it, nnd itwas notombodied in the law.
Ihreiu 0,1 aUornoJ*- Tho relations to those they
clients. Mr.° itreitton' wi'm 7 t,,0S° °f nnd
einhlovin h!'d 7'\ °'»l%ing-wl,om Mn Sdtolt° brn^ei
b c S f “d "'1,0m wore entitled to employ jointly
ma t s r,WCr° Partn°‘U >Ie w™‘e to him in relabel, to
mattes affecting patents, some of which lmd been beforo him,
aiid a controversy in regard to which bo desired .to. know
(ihout, because ho had a paper which would bo affected by
them. Mr. Sorroll was as proper a poison to consult as if be
had boon a regular attorney admitted to practice in tho Su¬
preme Court of the United States.
Ur.lowrey: Does Mr. Myers contend that agents like
Serrell are authorized to practice in tho Supremo Pqurt of
tho District of Columbia?
Ur. Myers: I understand that from tho witness. Of course
on appeal from the decision of tho Commissioner of Patents!
Ur. Lomey : T proposo to ask the witness just wlint his
function is. Ho is a special attorney — in fact, receiving his
power for each particular enso.
The Court: Beforo the point of privilege is taken it must
appear by the record that tho relation exists upon which flint
principle is applicable. As tho case stands noiv, I. am hot
satisfied that such a relation exists as would authorize or
warrant mo to reject this ovidonco upon that ground ; and as
I had based my decision before this discussion nroso upon
that ground, and that alone, and holding tluit tho rule that
I hnvo adopted and adhered to and enlarged at tho-instanco
of counsel on both sides with rcfcrcnco to mere questions of
materiality is still applicable, I am constrained to admit this
ovidonco.
(Exception taken by plaintiff.) ' . ' r
Tho question upon which tho Court had just ruled was
thou rend to tho witness, nnd is ns follows:
Q. Did you at any timo liavo a conversation with Mr-
Gcorgo Harrington upon the question whothcr or . not n cor.
tnin agreement between him nnd Mr. Edison covered these
qundiitplox nnd duplex inventions ?
A. I did. ■ • j
Q. What was tho occasion of this conversation or what
brought it about — did you receive a lottor from. Mr. Har-
241 A. I would like to state at this point to the Court that in
tho communications botweon Mr. Harrington on the one side,
and Mr. Proscott on the other sido, I considered tlioso
communications to bo confidential, and, unless tlio Court de¬
sires mo to toll those things that have been communicated to
mo, as 1 considered confidentially, I should not feel at liberty
to stato that which came to mo confidentially.
Q. I liavo not asked you for any conversation. I asked
what led to tlio conversation. It will bo time for you to
protect yourself in that way, if you soo fit, when I ask you
245 for the conversation.
A. I did receive the letter.
Q. Have you tlio lottcr with you ?
A. Yes, sir.
Q. Hns tlio letter a date ?
A. It has not
Q. Aro you able to fix tlio date when you received that
letter ?
A. As nearly ns I can fix it, it was loft at my office on
. Saturday the 20th of Soptembor, 1874, during my absence,
240 Q- It came to your hands ?
A. Yes, sir; on Monday the 28th of Soptoinber, 1874.
Q. Now, following that, did Harrington call upon you ?
A. He did.
Q. Ami was reference made to your having received a
letter from him?
A. Yes, sir.
Q. lioreforrodtothislottor? I
A. Yes, sir.
" Q. Allow mo to seotho letter?
247 (Witness hands letter to counsel. Objected to. Objection
overruled and exception takon by plaintiff.)
letter' 1}"‘,er ('00kS ^ l0tt0r,) W° d° not objoot t0 tbat
"’aS r0ftl1 ia °vi>loncc, and marked defendant’s
Exhibit 80.)
0- What was the contract referred to there if you know?
(Objected to and withdrawn.) 2
Q. I will ask whothor, when Mr. Harrington oamo to see
you, in pursuance of that letter, any particular contract be¬
tween Harrington and Edison was produced and considered?
(Objected to. Objection overruled, and exception taken
by plaintiff.)
Q. What took plnco when Harrington came to seo you —
I do not ask you for anything which you regard ns confi- n,
dentinl?
A. Mr. Harrington produced both contracts, or rather
both contracts had been loft with this lottcr.
Q. ’Which contracts?
A. Tlio one of October, 1870, and the ono of April 4th,
1871, had been left; wo bad both contracts present at tho
discussion.
Q. Hnd you not a press copy of tho contract of 1870 in
your office at tho timo?
A. At or about that time. 25
Q. Havo you that press copy hero?
A. Yes, sir.
Q. I would like to soo it?
A. I don’t think it wns taken from tho original ; the ono
of 1870?
Q. Yes, sir?
• (Witness produces tho copy.)
Q. From whom did you reccivo tho original paper from 2gj
which this press copy was inado ; I mean tho ono of 1871 ?
A. Either from M r. Harrington or from Mr. Keiff ; I can’t
j state which.
Q. About what timo did you rccoivo this from oithor ono
of these gentlemen ?
| A. I cannot define tho timo positively, but in tho neigh-
[ horhood of September or October, 1874.
-. Q. Do you know the occasion for which you made this _
:ess copy ?
252 A. There was one paper that was sent for record in the
Patent Office, and I was specially requested in connection
with the paper when it was sent for record, to bo careful in
enso thcro was any accident to the original that was sent-
that press copy was not of the one that was sent for record’
the one sent for record was sent on in January, 1876, which
Was the contract of October 1st, 1870.
Q. This is the press copy of the paper purporting to bo
a copy of the contract of 1871, which either Roiil or liar-
nngton handed to you 7 (
268 ' 1 A. Precisely. J
.^Mr.Lownyi I propose to road tho copy in evidence. I
Wo exhibit anothor paper, in which tho word "or" does
not occur. '
fUtlV W° °1,jC0t to tho I*053 00PJ> on 1,10 ground
that it is not a press copy of tho original.
The Cowl i The question is not tho same ns ir you pro-
os.- . . handed to the Jtucss by
264 air. iteill or Mr. Harrington. 1
Q- Do you know what has become of that copy ?
A. 1 ho one wo hud under consideration 7
mnj0f° • 11,0 CW from which this letter press was
A. I linvo no idea.
Q- Will you search for it 7
careful1 sZehliSfi0d “ ,,0t in ^ I have made a
was subneonn ? tl)0 Pai)Crs »» my ollice, because I
200 case. P °tl t0 bn"s n11 P«I'ors pertaining to this
an orLinaT* L ^lle Go,,rt d»M not treat a letter press copy as
A. Yes, sir; it did. 266
Q. At this interview with Mr. Harrington 7
A. Yes, sir.
Q. Now was your attention called to any particular
question arising upon that paper?
A. It was.
Q. -What was tho question 7
A. I would like to inquire of tho Court whether I shall
state communications which I received in confidence?
The Court : I think so. I do not really think that tho 267
rule of privilege extends to the relation which now appears
existed between yourself and tho persons with whom you
The Witness : I linvo been subpoenaed here, and I do not
ivnr.t to hold anything back. These gentlemen know that
there was a conference, but they do not know what that
conference was. • Tho counsel on tho other sido do know.
There have been a great many conversations between
Mr. Harrington and myself ; also between Prescott and
myself. As nearly as I can fix the conversation at
this particular timo and tho details of it, they nro
theso ; Mr. Harrington said that tho duplex invon-
ion was now attracting considerable attention. A
great deal of attention was directed to it at this
imo. He wanted to know whether in iny judgment this
contract would apply to qundruplex and to duplex; I
looked the contract over carefully with him ; 1 had looked 260
it over before he came on that Monday morning; I stated
to lnm that it appeared to mo that it was a question that I
lmd nothing to do with ; that my special duty was to obtain
these patents, and tho confidential relation that I stood ill
between tho parti
to bo mixed up w
•should own these :
cs caused mo to feel that I did not want
ith what I call the title fight, as to who
inventions ; I stnted to him that my judg-
s that as tlioso applications had been put in tho
260 Patent Office, and had been assigned to Edison and Prescoti
on the record, and that they would bo issued in thatmannei
unless some other proceeding stopped it ; my advice to him
was to institute a proceeding in the Supremo Court at the
District of Columbia, applying for an injunction to restrain
tho Commissioner of Patents from issuing these patents >",61
the cpiestion was decided whom they belonged to, and at tho
same time instituting such proceedings ns would bo right
and proper in the cyo of tho law to dotermino whether or not
this contract applied to duplex and qundruplox.
261 Q. This was the fust time Mr. Harrington had sought
your advice on that question, was it not ?
A. I cannot say positively that it was ; it was tho first
time that I found a note in my note book indicating that
there was a special consultation.
Q. Now, whether at that time, or any other, whenever the
first tune was that ho sought your advice on that question,
try and remember your prcciso language, and stato it to us?
A. I might stato that that is almost impossible ; for a
ponodof between two or three months at least, both gentle-
The Court: You understand him ns simply making tho
inquiry what, m your judgment, would bo tho effect of that
instrument on that, nwra-rl V
A. Precisely.
sa^/llTT1 h° opo,led tl)0 “onversation by
aucntln? ^ *" U°'V ^ good deal of
A. Words to that effect
larCLrt™w“ly.anrbinB m°10 1,1 tlmt timo o£ tlmt Porto*
8 tlW‘lhmUon Whioh 1,10 quodruplexwas
badalm eell?!l,ytl''lt h0 to know whether ho
had a right, or whether ho had not
Harrimrton i?„°n rc,aso11 to ,CI10W whether or not Mr.
_ect‘?lnfet°n had before that time „„y doubt upon this sub-
[Objected to. Objection sustained.]
Q- "What had been vnm*
can remember, with Harrington upon this subject, either 264
on this occasion, or before it, or after it?
A. I remember distinctly in connection with tho arrange¬
ments for the substitution of Edison’s name alone in placo
of the names of Edison and Prescott, in tho application that
did take placo lioforo thoro was no question presented to
mo of a claim on tho part of Harrington. When the claim
(list came to my attention on tho part of Harrington, I was
exceedingly glad in my own mind that thoro was no prob¬
ability of this title fight being confused with tho question
of tho - 265
Q. No matter about tlmt.
A. I understood that you wanted that.
Q. Not as to your being glad.
A. That expression was made between mo and Harring¬
ton m tho communications which took placo before this
timo; that I hnd told him of tho decision rotative to tho
separation of tho names, and this question whioh ho was
raising was not going to bo mixed up with any other
question.
Q. You lmd told Mr. Harrington boforo this time of tho 266
nmmgomonts botwcon Messrs. Edison and Prescott?
A. As to the separation of tho names.
Q. What was it that you said just now as to what you
told Mr. Harrington about the change ill tho name; you
have spoken of tolling Mr. Harrington about the arrange¬
ment to clinngo tho motliod of issuing tho patents to Pres¬
cott and Edison from that of joint inventors to that of joint
owners ?
A. Yes, sir ; nftor ho sot up his claim.
Q. You told him after ho sot up that claim ? 267
A. Yes, sir ; aftor ho lmd sot up that claim to mo.
Q. You hadn’t any conversation on tlmt subject boforo
that?
A. No, sir; it was not my place to.
Q. When he sot up his claim you then informed him, did
you, of the relations between Edison and Prescott?
A. Yes, sir.
Q. Do you happen to remember whothor ho saw tho
agreement?
268
i. I think ho did.
Q. What occasion was tlioro for you to toll him anything
about the change in the method of issuing the patents, ?f
this did not occur until after ho made his claim, which wa3
after August 1874 ?
A. Ho sot up his claim to tho ownership, and it was not
my place to express an opinion on that point When he
sot up his claim and produced tho paper, it was my place to
give him information that was on record in the Pntont Office
and was accessible to him as well as to anyone else and I
269. told him of this paper.
CJ. When ho said ho sot up his claim to ownership what
did ho do ?
A. Ho produced that paper, and said that under tho ex¬
pression “fast telegraphy,” ho contended that ho had a right
in tho quadruplox and duplex.
Q. It was under tho phrase “fast tologrnphy" that ho
based lus claim ?
A. Precisely.
Q. Did lie montion any other basis of his claim 7
270 A. I do not call to mind any; I think none other.
Q. It was then tho agreement of April 1st, 1871, which
principally occupied Mr. Harrington’s mind?
[Objected to, and withdrawn.]
tinm?Y°U LaJ b°f0,'° y°U tw° oontract3 or more at this
A. Only two that I know of.
Q. Otio was a contract of 1870 and one of 1871 ?
271 n YQS' S“'-
tracts 'rT roforonco m^o to oitlior of tlicso con-
telegraphy?” nil,'r,nSto» connection with the term “fast
A. Only by roforonco to tho rumor ;t=„if
A. He pointed out on the paper where the words “ f;
telegraphy ” were made use of.
Cross-exam {nation by Mr. Butler :
Q. When did you first know that Mr. Prescott claimed
have invented anything about duplex or quadruplox tei
grnphy?.
(Objected to as assuming that there was a timo win
this gentleman so claimed,' and that that came to the know
edge of tho witness.)
Boforo ruling on tho question tho Court adjourned unt
to-morrow.
Ilr.Anixo Rksuiied.
May 1 1th, 1817.
Gross-examination of L. W. Sorrell resumed by Gonori
Butler.
[The question which was ponding at the 1 1 t a ljoin en
was withdrawn.]
Q- You said yesterday that you wero tho Patent Solicito
of Mr. Edison boforo ho joined with Mr. Harrington ?
A. I did.
Q. About what timo did that rolatlon between you and Ed
son coninienco ?
A. I think the early part of 1870 or tho end of 1809 ; Ihav
not looked at that date to ascertain positively, but tho firs
business I had to do with Mr. Edison was in connection will
tho printing telegraphs.
r. Edison, ami laid tallied with iiim alone upon that
i I think ho has lieon a little confused,
ask you again to consider whether you did not have
■view with Mr. Edison alono, prior to the interview
"■self and Prescott jointly, at which you discussed
in the cfl'cct of this contract on record, upon tlio
s Unit ho was then proposing to engage in with
ro did discuss the subject of the joint invention, hut
t call to mind that wo dismissed the bearing of this
and I do not think that 1 made that statement
I did not mean to. I think that that must lmvo
mt ho was speaking of the joint invention. I can¬
to mind that wo discussed tlio contract,
ning, or after January, 1878, had you any converse-
th Mr. Prescott, upon this subject ?
equuntly I did.
which your opinion concerning tlio oil'cct of this
, or tlio possibility that tlio contract might intro
cct, was referred to 1
utlcn I object to that as loading and incompetent.
hitler objects to bringing in upon re-examination
its ot Mr. Prescott, about which no inquiry was
on cross-oxnminntion.) * ‘
•ill ask you to endeavor to recall tlio situation in
i0>, ‘ '° I,01U- o1' H‘o ilny, the time at which tlio par-
, > t',e 0,1180 of 1,10 conversation, and everything *
mi " W8 , ,,volvctl iu that joint interview of about
_0th,nnd tell me whether you remain quite sure
Prescott made am- ai.au-,.,. . .
Q. Did he, Sir. Prescott, and Mr. Ellison, answer sin
tnucously, in one moment, as by ono voice?
A. It was, ns I stated, a casual remark. I could not
which ono spoko first, but it wns substantially simull
Q. To whom did you ninko the remark, do you think
A. I do not think I made tlio remark to either one, b
made it in their presence and wns answered jointly.
Q. And in precisely the same terms by both?
A. Substantially tlio same.
Q. And at precisely tlio samo moment T
A. Very nearly.
Q. And nothing further said about it ?
A. Nothing at all that I can remember. I think
wns everything. It wns, ns I stated, only a ensun
mark.
Q. When they omno to you they had the July agreomc
I understand, with them— or on ono occasion?
A. They did.
Q. Tli at wns shown to you when for tlio first time?
A. About the 10th of August.
Q. And by whom ?
A. I think by Mr. Prescott.
Q. You think Mr. Prescott showed it to you first?
A. I think so.
Q. "Was ho alone 1
A. I think not. I think Mr. Edison wns there.
Q. Had you over known Sir. Prescott previously ?
A. Oh, I had known Sir. Prescott and done business for
him beforo this qmulruplex invention ennio to light.
Q. How long beforo that time had you done your last
business for him ? , . _ . ,
A. I think I did somo business for him about July ot
. I lmcl ; ft great tloal.
. Occupation, Ijmlgo from the listof patents wliicli you
l)l=eii somowlmt-you might call it— continuous j
. That was so.
, I will ask you to look at tho paper which I now show
[Paper handed witness.] You have tcstiileil to a list
'touts made by you at tho request of Mr. Heim I think
had it in your hand. Is tho paper which you now hold
py of that list ?
It is a copy to a certain extent, but it has changes
additions. You see those cases wero not pntented at
time. They arc now patented.
Ir. Lowroy reads in ovidonco tho list referred to, which
marked in evidence, << Defendant’s Exhibit 40.”)
Hr. Sutler:
This wus made by you 1
• Partly, and partly by a clerk of niino.
1 perhaps misunderstood one of your answers, and in
i to see ir I mu correct, I will ask you whether, at anv
view with Mr. Prescott, tho contract, which is spoken
being on record, was present and examined »
JotiOn any occasion that I know of until tho early
•mirth.? fU bef0IC you ^,no 011 10 «'* stand, to
la cs, more than once, in words substantially liko
i. that >ou and Mr. Prescott had discussed tho con-
of Burlington and Edison !
K ‘J'!8 “ 00,,t™dic“°» for tho purpose of
ul tmg, it must bo made much more specific.
The only statement that I t-.,
Q. I moan tho paper containing this list of pa
hibit 40.” And you gave a copy to tlioso goal
came to you; you did that in your clients’ bush
A. I made out a copy anew, including a gre
there is not in this, partially from my books, a
from this paper that had come back again ii
possession.
Q. But still it related to tho business of Mr. E
Harrington, your clients; didn’t it?
A. Not any nioro than to other's. It sliowe
and Stock patent and tho automatic -
Q. [By Mr. Lowroy.] It is true, whatever it
A. So far as I know.
Q. [By tho Court.] It is a compilation from
isn’t it?
William Orton, called ns a witness on helm
a, its, being duly sworn, testified ns follows :
By Mr. Loiccry :
Q. You arc the President of tlio ‘Western
graph Company, and reside in tho city ?
A. I am and I do.
Q. How long have you been President of tin
A. I think I wns olectod President in 1807.
Q. You havo been President over sinco?
A. Ever sinco ; yes, sir.
■ Q. Taken an nctivo part in tho management
of tho company ?
A. 1 havo had no other business. All my t
428 Q. In very brief, wlmt is that— tlio most coneiso state¬
ment of it ?
A. It is a process for the transmission at the same timo
of two sots of signals in opposito directions.
Q. Do you know in general when that was invented by
Mr. Stearns t
A. No, sir i I do not.
Q. Do you know wlion it was patented, about 1
A. I do not) I lmvo an improssion on the subject, but t
liavo no knowledge.
429 Q. Do tlio Westorn Union Telegraph Co. own that 1
A. They do.
Q. About whon did they purchnso it 1
A. It is my impression that it was in tlio spring of 1872—
early in 1872.
Q. Ha vo they used it sinco that timo 1
A. They liavo.
Q. Constantly, over sinco 7
A. I think every day, sir.
Q. Do you know Mr. Norman 0. Miller ?
A. I do.
480 ■ Q. Did you have any conversation with Mr. Miller in or
about February, 1873, having any relation to telegraph-
(Objeotcd to by Mr. Butlor.)
The Court: Ho may state whether ho lmd any conversa¬
tion or not.
The witness : I had.
.Q State what that conversation was about ?
481 (Objected to. Question admitted.)
oarofnlly oxaininod it — v
is a witness hero, called
by showing conversation
tlio testimony is not adi
only bo admitted upon
signor, nml that his dei
our title. That must be
is to bo sustained, if at i
Mr. lowrcy : Excuse
was, whothor tlio inline 1
tlio conversation.
Mr. Butter: Tlio who
olso no part of it is adm
1 say, the only ground
introduced is, that thos
against his interest whi
wo now claim to bo oun
put in ovidonco tho ado
ilico of tho assignee, w
montt This was in tl
incut, if wn liavo got an
groat deal further. It i
ploy an agent more or 1
missions for him, and t
taken against us. Tin
vohiolo of proof is wro
thing to bo proved is n
The Court [to Mr. Lo'
any admission by Mr. 1
wise, tending to niVeet 1
defendants 1
110
111
fl 486 (The question is excluded.)
Q. Is tlio signature of tlmt in your linudwriting ?
A. It is.
Q. Did you give nny direction concerning tlmt lottornftor
| 437 it was writton ?
A. I do not understand your question.
Q. I must not ask loading questions; but did you direct
it to bo burned, for instnnco ?
A. I did not; I gavo the letter to Mr. Miller.
Q. Did you givo to Mr. Miller, with the letter, any di¬
rection or make nny request?
A. I do not romombor.,
Q. Subsequently to the delivery of this letter did you see
Mr. Edison?
A. I did.
3 Q. Did Mr. Edison say anything to you ns to this letter
or its subject ?
J! Ir. Butler: Tlmt calls for the jndgmont of tlio witness
as to wlmt was tlio substnneo of this letter which your
Honor Ims not heard.
Tlw Court : Do you now proposo to prove the conversation
between Mr Edison and this witness ?
Mr. Loiorctj; Certainly.
The Court : For what purposo?
il/r. Lotorcy : For tlio purposo of establishing the de¬
fence in the case in general, and, especially, of showing that
Mr. Edison first said, « I have scon Mr. Miller ; ho tells mo
of your letter— ho shows mo your lottor; I nm now hero to
treat for the duplex which you spoke of,” anil then pro¬
duced tlio receipts which are here, and that tlion rosultoil
from that tlio contract which wo sut up as opposed to thoir
contract, ns establishing our title ns against their title. 440
That is wlmt the controversy is about.
Mr. Butler: Wo hnvo now got to the matter, viz., tlmt
they propose to put in Mr. Edison’s declarations mndo after
February tltli, 1873, in derogation of his title, which, if it
was assigned to us at all, was assigned to us in April,
1871, at the latest date, or in October, 1870, at the earliest
date. If wo bold the title at all, wo hold it by those assign-
incuts and nothing else. We cannot get anything else-
How then, can an assignor, after he lms sold out his inven¬
tion, or his land, or anything else to me, go and make do- , .
durations in the country that shall affect my title in a court 4
of justice. The other point, which I nm very glad to meet
now, ns it may snvo a great deal of further discussion in
this easo, is this: It is claimed here that by some verbal
agreement or negotiations, not reduced to writing, they
can hold a patent or acquiro some title to a patent. To
tlmt I answer that everything that was said or done is im¬
material unless it was reduced to writing, us it would be in
the case which is so familiar with us all — the sale of real
estate. The law of patents says tlmt titles to patents shall
• bu convoyed by written instruments, ami it has been do- 442
eided by every respectable court that lias ever had the sub¬
ject before it, with a uniform current of decision, tliut noth¬
ing of a patent can pass by parol uny more than the title to
real estate can puss by parol. It is a statute of frauds us
regards patents.
Therefore, a part of this bill, I observe, sots up that in
* consequence of certain negotiations and certain talk in 1863,
they got soiiio title to this patent or somo assignment of
Edison’s inventions which afterwards was paid for mid
closed by tlio receipt for $5,000 of December 0th. The
fact of this receipt stands upon the paper alone. It con- 443
^ not he added to, explained, vnrlcd, mndo lurger or smaller
in any way by purol, any moro than can a deed of real es-
- tato. The only difference botween real estate and a patent
' is tliis : Tlmt tlio transfer of a patent must bo written and
not under seal, whereas a deed of real estate must bo writ¬
ten and under seal. They can obtain neither equitable nor
i legal lions, nor claims, nor rights to a patent without
writing, to be enforced in a Court ol Equity, nny more than
they can enforce in a Court of Equity nny legal right by
parol with reference to real estate. .
^ - _ j ‘‘■grr" tt -
462 Mr. Orton, tlmt 1ms been mentioned, to discuss with lHm V
tlio subject of milking inventions for tlie 'Western Onion
Tologrniili Company, that slionld improvo tlio Stearns’
duplex, which tlioy then owned ; tlmt Mr. Edison brought
with him at tlio time various examples, which are in hero
ns exhibits, of the way in which ho could make duplexes —
some things that ho had already thought out; that in
tlmt conversation, or others which followed immediately,
Mr. Orton, after having looked at what ho could do and
knowing him to be an ingenious man, said to him, “ Go on
now and see next what you can do by way of improvements
upon the Stearns’ duplex or by way of duplexes or quadra-
ploxos generally. Wo will take them as fast ns they nro
made, and if we do not ugreo upon a price, wo will ilx tlio
price by arbitration and that Mr. Edison enmo to onr
building, entered upon his work there, and created tlicso
inventions in dispute, there, and under our employment;
and part of the case following this will ho to show Hint tlio
inventions now uluimed to linvo been existing at somo
former time, did not exist; that they wore not then in ex¬
istence, although, if they were, a superior equity arises to
464 us bccniiBo wo purchased, innocently, and in the face and
eyes of people, whoso duty it was to como and givo us
notice of their claims.
That is what will como from this proof; and I am merely
entering now into the llrst interview with Mr. Edison, not
intending to prove any admission by Mr. Edison, which
shall be in derogation of tlio title of anybody else, but to
prove nets and facts and contracts.
(The Court reserved decision ns to the admissibility of
the proposed evidence, until to-morrow morning, to which
466 timo the easo was adjourned.)
Direct examination of Mr. Orton continued by Mr. Lowroy.
Mr. Butler: I And, upon looking at tlio records, tl
■liloli I had overlooked, to wit: Tlmt precisely a simi
ucstion was raised upon in cross-examination of Mr. E
in, and it was thore decided by the Court that it won
ear tlio ovideueo and resorvo tlio cll'eet of it to bo dispos
f after.
The Court : I also suggested that it should stand, so i
i Mr. Orton was concerned, to the end that wliou ho w
at upon tlio stand the samo line of inquiry could bo mm
A. I did linvo a conversation.
Q. Did you, at or about that timo, meet Mi-. Edison ?
A. I did.
Q. Where?
A. In my ofllco, 146 Broadway.
Q. Was ho there by arrangement or by ncoidont casually
A. If you mean whother ho was tlioro by appointment,
ould say no.
Q. Was lie tlioro by nrrnngomont ?
A. Ho was tliuro pursuant to a previous arrangement.
Q. With whom ?
A. I think through Mr. Miller.
Q. Did you, at that timo, convorso with Mr. Edison i
spect to telegraphy or telegraphic inventions ?
A I did.
Q. State now, as nearly ns you can remember, the coi
rsntiou which took plnco between yourself and Mr. Ed
n upon thu subject, and if you nro not ablo to givo tli
eciso words, state tlio substance 1
ilfr. Wheeler : For tlio purposo of raising tlio point an
ring onr rights, wo take tlio objection formally, that till
idcnco is not admissible beenuso tlio case is without til
ituto of frauds. It makes no point which wo do not wis
bo considered ns waiving.
460 The Court: To exclude it would bo to dooido substan¬
tially ono point of the case, which I am not now prepared
to do. ' *
A. I thinlc the conversation commenced with an inoi
dental reference to tho communications that had passed be¬
tween us through Mr. Miller, and came directly to the sub¬
ject of additional duplexes; it is also my impression that he
produced to me lien sketches and drawings which ho wont
over with some particularity of detail, explaining to mo tho
lot grounds of his belief that he should bo able, with proper
apparatus, to make theso ideas successful and practical in
Q. Look at the papor which I now hand you, Defendant’s
Exhibit No. 0, and state whether you recognizo that papor 1
A. Yes. I do.
Q. Is that tho paper you have referred to as being shown
to you at that timo by Mr. Edison 1
A. I am not prepared to sny that this was tho first ex-
liibit made to mo by Mr. Edison referring to tho matters
462 touched upon in this paper, but at that interview or a sub¬
sequent one this paper was produced.
Q. Do you mean a subsequent, ono or at or about that
time, or when 1
A. At or about that time ; wo had a number of interviews
in a very short timo.
Q. At those interviews do you know whether Mr. Edison
was aware of the existence of tho Stearns’ duplex 1
xisA' n°"nSi it"'ast,l° subject of conversation between
463 Q’ 150 3-011 kno"’ tImfc 110 "’as awaro that tho Western
Union wore working and owned tho Stearns’ duplox 1
A. I hail talked with Mr, Edison on that several months
before,
Q. Do you mean that yon had talked with him in such a
way as to inform him of that fact ?
A. Yes.
Q. Upon this occasion that you havojust spoken of tell us
all that was said by yourself and by Mr. Edison in respect
to the subject of making other duplexes ?
oitherbJVn?^ ry f°1' "!° toruca11 tl,00XIU!t ■'H’guage used
eitlioi by Mi. Edison or by mysolf; if it will sulllco to give
tho substnneo I think I can do that very clearly.
j The Court : Givo tho substanco. I suppose it will bo im- 464
j possiblo to attempt, at this lato day, to givo tho oxaet lan-
; guage, but relate it ns near as you can recall it.
A. Mr. Edison treated in tho conversation tho business
of making a duplex as a very trilling nil'air; he said ho
; could make mo a dozen, and I think he said he could mnko
. mo a bushel, and that they woro of no sort of account par**
, ticularly; I said, “ Very well, I will take all you can make,
,! a dozen or a bushel;” part of tho conversation was in the
nnturo of badinage of that sort, and then wo enmo to the
serious business aspect of It) ho had appeared to suppose 465
that he should avoid any infringement of tho Stearns’
Potent ; I assured him, for my purpose, that that would bo
just ns valuable, in my opinion, if he could make improve¬
ments upon the Stearns’ which could bo successfully used
without an infringement of tho Stearns’, as to mnko inde¬
pendent inventions.
By the Court :
Q. Did you sny that your company owned and controlled
the Stearns’ patent at that timo ?
A. Yes; at that timo wo wero using it, ns wo thought, 466
very successfully; wo came to tho question after that in
respect to tho mode of settlement concerning any patents
that ho might bo nblo to obtain and turn over to us rela¬
tive to this subject; tho conversation was explicit ns to
this: that ho was to go on and make all tho inventions lie
could, and get all the pntonts ho could and turn them
over to us, and assigning them to us ; that he was to
rcccivo such compensation ns we should mutually agree
upon or failing to agree that tho matter should he referred
to competent arbitrators to determine ; and, in that con¬
nection reference was mado to tho fact that our company
lmd a contract in force at that timo with Mr. Gcorgo M.
Phelps, ono of its employes, providing for having tho com¬
pensation for ail pntonts for telegraphic inventions, in tho
yi^vont of disagreement Axed by arbitrators.
Q* on and mention what was said which you can
; ^remember— what you said and what lie said on that oe-
ijfcnsioii 1
f.; a A. I don’t remember anything more particularly. I
118
488 should add, however, tlmt In the course of the conversation
it was stated tlmt ho would require an opportunity to uso
the wires to test his ideas, to exploit them, etc., and I gave
him assurances that lie would have such facilities.
Q. nave you mentioned all that yon can now recollect
as occurring in substance at tlmt interview ?
A. I think I have ; I am not nblo to recall anything
Q. Did Mr. Edison fix any price upon any one of tlioso
inventions at that time 1
A. I didn’t think lie did at that time.
469 Q- Como to the next interview?
A. At a subsequent Interview.
Q. About when was this interview yon have spoken on
A. It was in February.
Q. Which year!
A. 1873.
Q. Did you notieo the date of Ex. No. 9 1
A. Yes, February, 13th.
Q. Was it after that or about tlmt time 7
A. 'l’lio interview at which that exhibit was produced
470 wns about that time.
Q. And that is the interview you have now been testify¬
ing concerning 1
A. Yes.
Q. Which exhibit, you say, may have been produced at
that interview or produced at another?
A. Yes.
Q. You don’t fix tlio fact positively in regard to that ?
io for 85.00.
you can recollect, was that
era you discussing flic duplex
u discussing any larger or
a remark nindo in
119
Q. Now, at any subsequent interview did ho mention a 472
price for the duplex ?
S A. Ho did for ono.
ill Q. What did lie say?
■ i A. Ho said I might linvo oi
■ Q. In what connection, if
; , said, or (hat prico fixed ? W
system of telegraphy, or were yor
■ other or different subject?
A. Jr.v impression is tlmt it w
nccfioii witii wlint wns a frequent matter of discussion be¬
tween Sir. Edison and myself, namely: a comparison of 478
; the merits of duplex and automatic. Ho was strongly in¬
clined to put die nutomnfio process very much ahead of the
duplex; and, from his point of view, ho thought duplex
a could bo ground out with great rapidity. For instance, lie
j said something like this: “Here is ono which I nindo tlio
1 night before, that you can have for $5.00.”
Q. Was anything said with reference to furnishing up-
i pnnitus and in reference to affording facilities, other than
j wlint you linvo mentioned, which might ho required of him
1 i» carrying on his experiments, at either this interview
j which you linvo spoken of, or at any prior interview con- ^74
corning which you have already testified ?
A. Yes, sir.
Q. Wlint was said and when wns it ?
A. I do not remember anything deftuito on that subject
; that was said at the first interview. Possibly it wns at tlio
i second, but early in this intercourse, on this subject it was
; understood tlmt wo were to furnish tlio apparatus from our
i stock tlmt might bo required to exploit ins ideas, or if
i wo did not have them on hand, to lmvo them manufactured. .
Q. Now, wo como to the noxt interview; stnto all that oc¬
curred at that interview which you remember ?
471 A. My impression is that I lmd other interviews with
Sir. Edison during the same month, and that they were of 2jy the Court :
fTwimt”t‘ca,no under discussion at those inter- | «3T “it was understood,” what do yon mean by
t i*. ... . ... a,ltl„tnv v tlmt j it is rather au indefinite expression ?
TiSZ produced, at subsequent interviews, TawLlf vmi wiU Jos, ,^1“^ T "if ‘J0"0
sketches, sometimes in ink, sometimes in pencil, and sonio- * , ’ ? t win j,.. ,, 10 , , K f°’f s° nn.<J
times made, apparently, while waiting for admission in any ******* "ill do, but it
anteroom ; but the subject of duplex and its operation wns ; ■ >"”* , i* ~ ,no ns 1 ,r0,m8,nS to
a frequent subject of discussion betwoou Mr. Edison and - 1 0 1CS0 nc 1 les'
mysolf at subsequent interviews.
475
120 '
475 By ill)'. Loicrcy ;
Q. Did ho ask you for anything of that sort ?
A. Do did.
Q. What did you say in response to his request ?
(Objected to as leading.)
Q. Wlmt was said by Mr. Edison ns to what ho might
477 require from you ?
A. I do not think tlint such stntomont was nmdo nt any
ono time. Mr. Edison would eomo in and say wlmt ho
wanted and would get it, and tho next timo ho would want
something elso and would get that.
Q. Do you mean to say that never nt any time, Mr. Edi-
son expressed to you tho idea that ho might want some¬
thing from tho Western Union Company f
(Objected to ns loading.)
Q. Wlmt did ho require ?
A. llo required relays particularly, and I think keys, and
sometimes ho would suggest slight modifications in things
that wo lmd in the stock, and they wore nmdo as suggested
by him in tho shop.
Q. When did ho make these requirements 1
A. Unless I could bo nblo to refer to papers, I should not
470 be able to lix tho timo definitely, but generally in tho early
part of tho year 1873 is my impression.
Q. When ho mado these requirements, did you comply
with them ?
A. Yes, sir; always.
. Q. Had tliero anything over been said before in respect
to such requirements which led you to anticipate that thoyi
would bo nmdo !
A. Yes, sir; that ho should want somo apparatus and1
assistance.
121
Q. Who said that? 4
A. Mr. Edison.
Q. At wlmt timo? A. At somo ono of tho earlier inter-
■ views in 1873.
Q. While tho matter was in negotiation between you ?
Q. Wlmt did you say to him in connection witii that ?
A. That ho could luivo wlmtovor ho wanted.
Q. Uow did that conversation ns to tlicso things to bo
required stand, in point of time, with rofcrenco to wlmt you
lmvo told ns ns to your directions to him to go on and do
tho work, and that you would tnko idl ho could make ? 4
A. I do not remember whether it was at tlmt tirst intor-
viow or immediately afterwards.
Q. Did it occur immediately afterwards, if not nt tho first
interflow ?
• A. It did.
Q. Did it occur boforo or after you gavo to him tlicso
■ special directions to go on and work tho duplex ?
Q. Either at that timo or subsequently, and very near
| that time.
Q. Wlmt did Mr. Edison do, if you know, following tlicso
j conversations of which you linvo spoken ? 4(
i A. Of my own kuowledgo I do not know that lio did any-
' tiling.
Q. Did ho over como to you after tlint timo with any ex¬
hibits of work ?
A. He caiiio to mo subsequently, and told mo wlmt ho
had boon doing in tho way of experiments.
Q. Wlmt did ho say 1
: j A. Ho would say, for instance, that “ last night I tried a
j liumbor of theso, and part of thorn wore reasonably sue
J cessful and part of them wero not.”
Q. Did ho tell you wliero ho hud tried tlioso ? 4f
| A. Probably ho did, but I do not now remember do-
_ j finitely between what points.
■It Q. But I mean in what plnco did ho mako tho'trinl ?
} A. In our office, 145 Broadway, and on liis premises iu
i Newark.
Q. You did know that somo of his work was being carried
on iu How York ?
A. That Is my understanding.
m addressed to tlmt gentleman,
rtighiiu to give Sir. Edison sucli facilities ns
'defendant's Exhibit 11, which 1 now hand
j whether you have ever seen that before?
Iviiow the handwriting?
Mr. Edison's handwriting, is it not?
ns this first brought to your attention?
ho time of its date,
ed April 1th, 1873.
j|y received it the next day.
!ig that, did you liavo any interview with Mr.
no recollection of any interview ns connected
mornndum particularly . j
u an interview after that dnto ? .
Q. Try to recall what ho said at those interviews con¬
cerning what ho was doing for you.
A. Some time during tho year 1873 — I think after the
return of Mr. Edison from Europo— ho unmo to me com¬
plaining somowhnt that while tltoro wus no indisposition
manifested to cooperate with him, the kind of eoiiporation
that ho had received from the company's omployus, in tho
uso of the facilities, etc.', had not boon such ns to onnblo
him to make that successful and satisfactory progress
which ho had expected to make. At somo time — I think
in the fall of 1873— t inquired of him about his having ob¬
tained any pntonts. At ono of theso interviews it is my
impression ho stated that ho had nothing yet ready to pro-
sont. Whether it was bccauso tho patents had not been
issued, or because they had been issued and ho had not
chosen to present them, I am tumble to say.
Q. Ho did not say 7
A. Mo, sirj hut after these representations from him to
mo that it was necessary for him to liavo bettor assistance
and facilities in order to enable him to accomplish what ho
desired, I then sent for Mr. Prescott.
•>»« unit a low Hays tliorealtcr 1 fouml
them both at work on somo experiments in tlio cxpori-
inontnl room in tlio building.
Q. Was tlio room in which Mr. Edison and Mr. l’rcscott
woro making experiments, a room to which tlio public nro
admitted?
A. Tho public ought not to bo admitted ; I cannot say
to what extent they nro.
Q. It is not a public room ?
434 A. No, sir.
Q. Is it ii room to which Mr. Edison or any other person
would bo permitted to go and make experiments except by
the consent ot the officers of the company ?
A. No, sir.
Q. Now wo will return to this series of interviews of
Which you huvo spoken, in which lie made statements or
reports ?
A. Xlds brings the ease, according to my recollection,
along about tho fall of 1873, or tho winter of 1873 nnd
after this now arrangement had been made. I saw Mr
495 Edison frequently : I did not have formal and extended
conversations with him. Ho would mention from time to
timo what ho was doing, and expressed more or less con-
ildenco as to Ins ultimate success.
Q. What did ho say, state ns nearly ns you can!
sa?‘th?hemdVtat° ]1° W0UW “Mo you mean t
j Q. When you say that Mr. Edison “would "say
mean to say that he did say or that lie didn’t, whit
A. Ho did say it.
By Mr. Lowrey: From timo to timo?
A. Yes.
Q. Did ho from timo to timo inform you that
making experiments and progress ami changes.
•> did lie say lie was doing in rospect to this business
The Court: I think tho memory of tlio witness 1
pretty wull exhausted, and I am of tho opinion that
may now put tho question, and that it is at tho
stngo competent.
A. He did report from time to timo that ho was
progress in these experiments, nnd expressed, I she
increasing confidence in his ultimate success. I w«
to add something which suggests itself to mo at
incut in regard to previous conversations.
Q. State anything that oeeured ?
A. In one of tho earlier interviews with Mr. E
1873, ho asked mo tho question, if a duplex that I
messages in tho same direction, would or not bo a:
hie ns one that sont two messages in opposito (lb
I replied to him that it would liu more useful, and I
her giviug tho illustration to him at tho timo, rofc
street railways, saying that everybody desires
down town in- the morning, and to go uptown at nij
that I tkoiiirht it would bo useful to hue 1 icihlics
Q. Look nt tlio papers I now lmml you, beiny ilcfoii-
limit’s Exhibit 13 mill 15 A, null snys whotlior those were
over brought to your iitteution ?
A. They wore.
502 Q. Wlint wns the liabit, if lio Imil nuy lmbil, of Mr. I
Ellison in respect to making reports. Did hecomo in with $
' them, diil lie semi them, iliil lie make them orully or in R‘
writing ? |v.
A. I should say that Mr. Edison rarely enmo to my desk
without having a memorandum in his hand that ho hail
either prepared boforo loaving homo or that lie sat in my
auto-room and prepared while waiting for tlio interview.
[Mr. Lowroy reads Exhibit 13.]
508 Q. Havo you any idea of when you received that f It *
lins no date. f.
! A. I havo an impression as to tiio time. 1 think it wns
nt which tlio inquiry was llrst made.
Q. How was it mentioned?
A. X think I asked him tlio question if lie suececdc
sending two messages in tlio same direction, why it w<
not ho as easy to duplex both as it would to duplex
null that there would bo four.
Q. Wlmt did lie say to that ?
A. Ho expressed tlio opinion that if ono could be done
other could be done.
Q. Look again at Iff A. Are you ablo to identify
paper with that conversation null that inquiry in any
einl manner ?
A. bringing the two together?
Q. Yes.
A. It is my impression that that paper wns not presoi
at tlio time of tlio conversation, but very soon nftorwii
Q. Look at Exhibit 21 anil say whether you recog
that, or whether that over enmo to yoiirnotico?
A. Yes, that was handed to mo by Mr. Edison.
[Mr. Lowroy rends tlio same in evidence.]
A, My recollection as to tlie time during
especially concerning quadruples wero tirst
indistinct, I should say they wero made dur:
1873 and in tho spring of 187-1 ; but, ns I hui
marked, they dul not impress me as being i:
conscipioneo until shortly after my return I'rc
May, 1874.
Q. Non-, roports concerning duplex wore
this period; when did they begin?
A. They begun in tho spring of 1873.'
Q. Was there a period during which tho
inado concerning duplex alone ?
A. There was a period when tho roports lmi
tiroly to duplex.
Q. There was, tlion, a period wlion tho repo
dovolopo n distinction in respect to quadruple
A. There was.
Q. Tlcnsc state your best beliof or impress!
Vt tlio first intorviow l had with Mr. Edison, niter
turn from Europe, lie reported very successful pro-
iu tlio (Un-elopement of tlio qundrnplex.
lid ho sny nnything further, or did he stop with V
words 1 ft
[ have no recollection ns to the language ho employed
Icing this report to mo.
IVns nnything snid ns to tlio process employed!
there wns.
Whntwns it!
Ho probably explained to mo oxnctly how it wns dono ;
t think I nm competent to ropent tlint to your Honor.
Jlfr. Zowrcy i
You are not au electrician.
Bid ho explain to you how it wns dono !
Ho did.
At more than ono Interview !
At moro than ono intorviow.
Look at Defendant's Exhibit 14, and say whothcr you
over soon that letter bororo 1
1 have.
I will ask you ono question which t omitted in tlio
10 of my examination upon a previous point, and I will
t now. Recalling your attention to tlio period when, |
your attention !
A. It wns not long; perhaps n week.
Q. By whom !
A. By Mr. Prescott.
Q. Did yon nt any tiino convcrso with Mr. Edison
tlio subject of tlio letter!
A. I did have a conversation with Mr. Edison (
subject of tlio letter, but I do not remember that
voracd with him nt that time.
Q. Nor about Hint timo; wns it a later period than
A. It wns latur in tlio year, I think.
Q. What was snid by Mr. Prescot e
this lotter when lio presented it to you !
(Objected to as immaterial.)
(Objection sustained.)
Q. Upon receiving this lottor wlmt did you do !
A. I put it with other papors that I was not able I
amine during business hours at my oflluo, and took it
for consideration at my leisuro in tlio evening ; l hi
conversation with Mr. Prescott on that subject a
time.
Q. At any timo!
(Objected to.)
f return from Europe, lie reported vory suecessrul
ess ill tlio developoineiit of the qnndruplcx.
Q. Did lie say anything further, or did ho stop
lose words i
A. I have no recollection as to the language ho empl
making this report to mo.
Q. Was anything said as to tho process employed t
A. There was.
Q. Wlmt was it?
A. Ho probably explained to mo exactly how it was i
don’t think I am competent to ropoat that to yonr 1
By Mr. Bowrey :
Q. Ton are not an electrician.
A. No, sir.
Q. Did lie explain to you how it was done 1
A. Ho did.
Q. At moro than ono interview 1
A. At moro than ono interview.
Q. Look at Defendant’s Exhibit 14, and say wliotln
mvo over scon that letter beforol
A. I have.
Q. I will ask you ono question which I omitted
ourso of my examination upon a previous point, and
(Objected to.)
it and to become a partner or Mr. Edison under tlm
of tho contract. It is clinrttod in the complaint in
iso tlmt Mr. Prescott was tiio instrument mid tlie too
Western Union to defraud Edison, and bo was used
rt purpose, and did wlint lie could to prevent him
getting paid. Unit is nn allegation in tin .1 ‘
wo aro entitled to rebut.
i Court: 'i’liero is no evidence ill tiio case, so far, in
at of such an allegation, mid it is not necessary to |
Butler: After this explosion of Jlroworks, which is
iy brother Porter’s saying that wo altered the “ or,”
idraw my objection and will consent that tiio evidenco
You' say that you considered tho proposition over
What did you do ; state wlmt was dono in respect
e subject of tiio lottori
"Well, in a day or two, while ho was at my desk, I ra¬
id him tho paper mid stated that 1 had considered the
iir, and saw no reason why ho should not bo permitted
ec'pt Mr. Edison’s offer.
Was that all that was said at that time I
A. I explained to Mr. Prescott wh
witli Mr. Edison was, and how tho c<
to he made by tho company, was to
also recollect, now, that I gavo as an i
assenting to tho proposition, that it w
difference to tho company whether tho
it should pay wns received by one peri
Q. In mentioning to Mr. Prescott tl
mention all tho tonus of tho contract t
(Objected to.)
tty the Court:
Q. Wlmt did you tell him tho contra
A. 1 told hint the contract was for tl
of all patents and improvements in du
disagreed as to tho compensation, tlm
taincd by arbitrators, and then follov
that it would not mnko I <
whether they dealt with two persons
that contract.
tty Mr. Lottery:
Q. ITml you a conversation with Mr.
186
137
refcrenco to his proposition anil its acceptance, qmto inch
<l0Q IVas there anything said in respect to how the con-
tract with the company should stand after the intro-
auction of Mr. Prescott as his partner?
A. I do not. remember.
Q. Did you, at any time, say to Mr. Edison, in respect to
the fact that Mr. Prescott had to come in, anything in re¬
gard to the manner of ranking tlio compensation or of
taking the conveyance of patents ?
641 (Objected to.) ,
Q. Did you know, at that time, that this agreement of K
tho 7tli of July had been prepared 1
A. Yes ; at tho time.
Q. Before that timo did you, in conversation with Mr.
Edison, in rognrd to Dxing tho compensation between tho
now IH-m, so to speak?
A. I do not remember.
By the Court :
42 Q. You said, a moment ago, that you did liavo a con¬
versation with Mr. Edison in rognrd to tho fact that ho lmd
made this proposition to Mr. Prescott, mid that it luul been
neeopted. "Was that conversation anterior to tho 7tli of
July?
A. It was not.
By Mr. Bowery :
Q. It was not until aftor they had made tho agreement?
A. No, sir.
is Q. Beginning at tho timo when you learned that tho
agreement had been made between Mr. Prescott and Mr.
Edison, what after that timo was done by Mr. Edison with
respect to experimenting and with respect to the b..s.i.ess
of disposing of these inventions to you ?
(Objected to.)
The Court ; I will receive tho evidence ; to oxcludo it
would givo a construction to tho agreements of October and
April which, at this juncture of tho case, T am not willing 644
to do.
A. Tho experimenting wont on very actively.
Q. Where ?
A. In tho oxporimontal room of tho company, 145 Broad¬
way; I had gcnornl knowledge that it was going on myself
ovory night and during a portion of the time in tho day, for
I visited tho rooms frequently and witnessed the experi¬
ments. How soon the apparatus was put upon the lines
and set up in Ilia operating rooms and set to doing the
business with tho other apparatus I am not able to say. g jg
Q. Hut it was set up on tho lino to do business?
A. It was; I spoko to Mr. Edison some timo in the fall
of 1874 about tho nmttor.of a settlement, introducing that
subject myself; I distinctly remember that Mr. Edison
stated, on tho occasion of my speaking to him about an ad¬
justment and ail accounting, that ho lmd no patents ready
to bo assigned ; that they were hold in some state in tho
Patent Ofllco, with tho details of which I am not familiar,
where they wore not acccssiblo to tho public, in order that,
by tho experimentations and exploitations that wore going
on all tho while, they might, perfect them to tho highest g jg
possiblo degree before they should bring them before tho
public; that is the substance, ns near as I can get at it, of
tho answer that ho then made : at a subsequent timo ho
applied to mo for some money.
Q. Look at the paper now handed you, which is Exhibit
24 ; you liavo soon that boforo ?
A. Yes.
Q. It was handed to you by somo ouo?
A. It was handed to mo by Mr. Edison himself; ho
brought it in, linving writton it, ns I supposed, wliilo ho
was sitting in my anto-room. 617
Q. About what time?
A. It was in tho fall of 1874.
Q. Was sonionionoy paid to Mr. Edison about that timo?
A. Not at that timo, subsequently to that.
Q. IIow near to tho payment of tho money was the re¬
ceipt of this paper ?
A. It may liavo been for a week or two.
[Mr. Lowroy read tho paper.]
18
1S9
■ 1 Mr Edison when ho handed
my reply ‘n mraium sum ^^vcon tUo highest uml this
l0QC.Nviiat did l.o say f
whether you rccognizo that 1
t-^jwsssss^:25
tlint was given fo
C50 °f QWld'eU is December 10 ?
A. Iboliovo so. ■ i:
[Komis same in ovidouco.] U
Q DO you know nnytldng about tbo preparation of that |
pnpor 1 ,
A. In wlmt respect i tormB. Do you know
«s rsr sr.s" z. »««> — * -
551 terms 1
By the Court :
Q. State the eireamstanees under wbieh, and the man.
in wliieli tiro receipt was prepared.
A. I turned tbo matter of tlm dcU. °' “-S. -i'Ue
ford, the vice-president of tbo company, sumo dona. ;
paper is in tlio lmndwriting of Mr. Brower, I believe, who 552
was an assistant of Mr. Manifold in the oillee, in same
capacity, and who is now tho secretary of the company.
Whether Mr. Mumford called in any professional assist¬
ance in preparing the instrument or not I don’t remember.
Bo brought it to mo alter it lmd been prepared, and l
glanced it ovor, and gave my assent to it generally, and it
was executed.
Q. Mr. Edison signed it?
A. Yes.
Q. Did you give any attention to tho preparation of tho
form of that pnpor ? 5(53
A. I did not.
Q. Bor tho substance ?
A. Bo, sir.
Q. From tho payment of this monoy in, toll 11s what took
place. Did experiments continue, and work continue, and
negotiations continue?
A. Work continued j negotiations, I think, had been in
progress before tho execution of tho pnpor.
Q. Wlmt negotiations do you now refer to ?
A. I refer to negotiations with Mr. Edison concerning
the conveyance to us of wlmt I understood to bo tho 654
patents, ready to bo issued whenever ho desired tlint they
should como out and bcconio public; and we were discuss¬
ing tho basis of tho arrangement.
Mr. Butler 1 I think wo aro entitled to what was said.
Q. Wlint was said— give tho conversation ns nearly ns
you can recollect?
A. It is exceedingly difficult for mo to give tho details of
tho conversation in tho vast mass of conversations that I
conduct. 666
The Court : Givo tho substanco as nearly ns you can.
A. I can givo tho substanco, but tho words thomsolvos it
is vory difficult for mo to attempt to give. I think I ought
I to say, ns preliminary to tho negotiations, that I had been
requested, on behalf of Mr. Edison’s family, in making this
negotiation, to provide for continuing payments during a
term of years iustead of a certain sum of mouoy in baud.
? lr thorn, mat dirt they relate to.
but they hart been
; before this monoy was paid.
rsu- »>”""* °r
ami 1
^mato’of fact wo know there have hcei none
a, ye How ami wherertirt these negotiations take
mil were any of them oral, or any ol them m wnt-
bey took plaeo in my oflieo ami were partly oral ami
tlint, ami in whoso handwriting the' body ui
tines are?
A. I recognize it as a paper I have seen ho
the handwriting of Edison.
Q. And tlio signatures ?
A. Are tlmso ofT. A. Edison and G. B. Prt
Q. Ho yon romomher that paper being limn
A. I do, by Edison.
it{Q. And loft with yon about die dnto tlint r
A. I should any about tlio dnto.
Q. Look at Exhibit No. 2/5.
A. 1 recognize tho handwriting.
Q. Yon remember it boing handed to yon ?
A. 1 don’t remember the circumstances uni
was handed to mo; 1 romomher having seen i
Q. You can state whether this was liandod
part of the negotiations of this lnttor part of 1
A. I cannot.
Q. In respect to tills paper No. 27, the lotto
Edison and Prescott— was tiioro any converse
at tlio time with Edison 1
A. Tiioro was no conversation about it.
Q. Can you recall it 7
, i. .yijioii X mnclo at tno tunc.
"q. "\Vliat was tlint 00!'v®|^”g0\.0(iUBO this to llgnrcs,’’
A. Thoomloraomoiit is, lloMO „ aoni.ito form
which was to represent ; tl.Mo q[. |m ummmcd
l"n»T andl oskcd tlmt it to rc 1 me 1 t lb ° , «! at 18 t0
say, applied. , „ . ,
Q. you didn’t rojeot tlmt 1
(Objected to and waived.)
u,;t— a« -*« - s;“C'
toll Edison tlio story of tho ow nci i form it
pointed ^-^ffiS^toto-pt-in
was necessary ior 1 to m m i rocoivcd i,im gra-
for tlm appointinent, and tl o ^ m t0 pllt to him,
ciously, and said l o ns “l “ 5 d t‘ own the boat at the
and tlmt was whether he ox . mean i ^ s„tislled to
end of the firat ““80"'h°lt Jns lUo tirst answor I made. It
wait a year or tno. Ihat it should tornado
666 is ''iyre“^f.0 .t mi k t ogr<’t it, nor imply ^
x'undorstood what it would amount
^ t0Q. And you said that substantially to Edison 1
A. That is my recollection. ?
Q. Edison left that paper with you 1
;:s
67 ures made, and brought to mo subsequently.
which ho would produco hereafter.)
n. Did you receive any restatement or reduction of this
1>l a! \ received a restatement, but 1 am not able to say,
without tho figures that wore prosonted to mo at tho timo,
whether it was a reduction or not; if I may add, I will say
that tho principal point about tho next statement was that
it was more precise and explicit.
Q. Look at tho paper now in your hand, which is Exhibit
No. 20, and say if you have over seen tlmt boforo.
A. I have.,
Q. When and wliero !
A. It was subsequent to tho pnpor that has just been
shown to me, dated Decomber 10th or 17th.
Q- At what place 1
A. At my plnoo.
Q. Is tins in Mr. Edison’s handwriting ?
13. It is; it was brought ill by Mr. Edison . mid handed
to mo, and wo had a conversation about it.
Q. About what timo was this i
. A. It was near the end of December, I should say.
Q. What wns tho conversation which you laid '!
A. 1 said to Air. Edison in substnneo, “ If yon lmd asked
mo to make the proposition— which ho laid never done—
the diU'erenccs between tho one which yon now submit and
what I mu prepared to offer you are quite iiunaitorial ; our
views, therefore, are in substantial accord; I uni going to
Oldcngo in a day or two, and ns soon ns I return ivc will
tuko this up, put it into shape, mid execute it.
Q. Is that all yon said substantially; or what did ho
say i
A. I don’t romombor; L don’t recall anything that was
said relating to tills matter, nor do I recall wlait reply lie
ho made, uxcept tlmt lie acquiesced in it.
Q. Look at Exhibit 28 ; is that a copy of your letter to
Mr. Edison of tlmt date 1
A. I should say tlmt it wns.
Q. By whom was that sent to Mr. Edison, if you ro¬
mombor ?
A. I think by Gonornl Marshall Lefforts.
Q. Ho is sineo dead?
A. Yes, sir.
Q. Hail you, between tho date of that lottor anil tho
leaving of this Exhibit 20 with you, hoard of anything
from Edison— laid ho communicated with you in any way 1
A. No, sir ; I think not.
q. Ton line! boon to Chicago, lind you ?
0 a. I had boon i yes, sir.
i sr: » - « ..... «
j“"» » ~ *> “»
time of your return ?
A. Yes, sir.
A S', messenger or messengers to him and sought
to got in communication with him, and did not succeed in
578 gr3t communication that you snccccd-
,rti: groins that it was this communication, do-
livored through General Lofl'orts.
Q. This letter 1
Q.' I wiiuall your attention, now, to the earlicriiartot
the year 1874, and nt the interviews saul to hni o taken
place at at that timo botweon yourself and Mr. Josiuli 0.
Boiff.
5U (Objected to. Objection overruled, and exception by
plaintiff.)
Q. Yon know Jdr. Jteiff, I think yon have said!
Q.' DMyw have any negotiations or interviews with Mr.
Boiff in the early part of tho year 1874, in relation to tlio
“MIS*- ..... m, »..»• n. m » »»
Europe in 1874, and, I think, in the month of .Tune.
B7e Q. State specifically tho i ibjeet of tho conversations
which you had with Mr. Boiff. , . ,
A. Am I permitted to stato what led to tho interview !
Q I presume you will bo. I intend, at first, to fix a
subject which, I suppose, wo nil understand; and then I
shall ask how that subject was first introduced to jour at¬
tention, mid why you enino to seo Mr. Boiff.
A, If it was in June at all, I can fix it very closely. It
was subsequent to an interview that I had with William 11.
Damdgc, which was on tho 11th or 12tl. of Juno, and it was ™
prior to my caving Now York for a somewhat extended
absence, which was on tho 18th or 10th of June
10 y1,nti subject did tho interview with arr. Davidgo
relate, without saying anything which Mr. Davidgo or you
A. I was notified to meet air. Davidgo to consider over
turps which I had boon informed ho desired to nmlco and
n Inch ho did inako nt the mooting.
Davidgol'^ "'"8 41,0 °f th° i,,ton’io"' arr.
totell^nTnW1^0" ^ “I’erturos, made by arr. Davidgo, 677
th° ^ ostom Tolegraph Company ti.e con
trol of the nutomntio tologrnph. J me eon-
memiwTbniT t'‘°1 mit0"mtio tc]«grnph-what do you
mean bj that term when you use it?
(Objected to.)
(lo^ot^hink H utT84 n0t nt 0,0 fn0t ns 1vo 1,086 °"»< I
lo not think that the witness can bo permitted to stato
what significance he attached to tlioso words in this eon
versa tion with air. Davidgo.
(Question withdrawn.)
1
A. I think I liavo. 679
Q. Wlion, and wlioro did you seo it!
h.itv* ,41lil'k “m"8 lno<luce(1 t0 »«o by arr. Davidgo, nt tho
mtoiMow to which I have just referred, in tho oflico of O.
JI. I aimer, arutunl Lifo Insurance Company. A
Mr.Lowrcj ; Tin’s paper has been identified as signed by ■
Ir. Harrington, but was not rend in ovidonco. I propose I
w to read it in ovidcuco, ns being tho declaration of air. I
148
580 BmlniM,
ssr
sale, of tho automatic tologwi • important part
oral subject notico'to Sir. Orton, as Prcsi-
«»»«["” “ *: “»S Llduca It c«.n-
at tlmt time, anj mtorost rtniuly ,md not con-
admittedly 0 . , t ttl0 negotiation instituted by
csss-’asswtja---
«■ s:,;“ rjs? ss*«* *“»
Mr Dickerson: Wo propose to show that Mr. Orton being
fr;;;rass^”“«CL
carding tlio intervention ofDavidgo and to a conversation
tliat did occur.
Mr. Butler: My proposition is, tliat nothing that Davidgo
could say would bo ovidcnco, and tliat nothing tliat
147
Orton could say to him would be evidence. Tho letter eon- 584
tains no authority to Mr. Davidgo to say wlmt tho extent of
their interest was. It becomes a naked declaration of Mr.
Harrington for buying the automatic property.
The Court: It is not proposed to bind anybody by any
declarations in the letter, but to show that the authority was
conferred upon Davidgo by Harrington, to negotiate with
respect to tho sale of automatic. Tho objection being sim¬
ply to tho materiality of that fact, I will take it for what
it is worth, and determine its effects hereafter.
(Tho pnpor which was dated February 18th, 1874, and 685
which was formerly marked defendants Exhibit 84, A. for
identification was read in ovidcnce.)
Q. Look at tho letter which I now hand you, Exhibit 84 ?
A. I never saw that paper before.
iTr. Lowretj : This paper is identified as being in tho
handwriting of, and signed by Mr. Harrington, addressed to
William H. Davidgo. In support of tho offer I will say
that if it should be admitted on our offer, wo will stipulate
that it shall be stricken out unless I furnish proof that this
paper was found in the papers of Mr. Davidgo, now deceased,
by his administratrix, enclosed in tho letter which has just 686
been read, and it was sent to mo in that shape. It is a pa¬
per which refers to tho letter and is tho basis of an nrrango-
ment underneath the letter. It is dated Fobruary 15th
lft 7.1 ’
(Objected to. Admitted.)
(The pnpor which was marked defendants Exhibit 84, for
identification was read in evidence.)
The Court : Understand distinctly tlmt tho defendant dis- gov
avow any interest to clmrgo anybody with tho admission
contained in tho letter or power of attorney, as limiting tho
oxtent of its grantor’s claim.
Mr. Lowrcy: Cortainly.
Mr. Dickerson : These papers do not touch that
(Adjourned until Monday.)
/
\
148
688 New Yoiik, May 21, 1877.
!' Mot pursuant to adjournment. Parties appearing as bo-
fore.
Mr. Lowrey calls attention to folio 2,286 of tho printed
minutes, and to tho lotter of Mr. Orton, read by Mr. Butlor
in evidence, and which was not markod ns an oxbibit, It
is agreed that it bo marked “Ex. 88 D,” and it is so
markod.
By ifr. Lowrey ;
Q. I think you mentioned to mo that you wished to
mnko somo explanation 7
A. I hnvo been afforded tho opportunity to road tho
stenographer’s report of tho examination thus far, and in
connection therewith I hnvo also been rending tho examina¬
tion of Mr. Edison; and tho reflection upon tho subject
calls to my mind one or two mnttors occurring in tho sum-
1 mcr of 1874, which it seems to mo I should have brought
out in answer to the questions put to mo about tho matters
that wore transpiring at that time. Ono question was
whether I had had any conversation with Mr. Edison con¬
cerning his negotiations or arrangement with Mr. Prescott,
and I answered that I hnd, and I think your Honor ashed
mo if it was before or subsequent to tho agreement of July
9th, and I nnswored “subsequently." It is true that I did
have ono subsequent Tho inquiry wont no furthor, but I
. recollect a conversation had with Ifr. Edison before July
9th, at somo time in tho early part of Juno ; and tlioro woro
also somo transactions with Mr. Edison about that timo
which I could not givo in response to the questions asked
mo, or which I had forgotten whilo I was being examined, I
do not now remember which. Am I at liberty to state _
Q. Ah, undoubtedly. If there is anything improper it
J important with Mr. Edison. He B
1 referred to tho offer that ho had made to Mr. Prescott, and 692
I which I had authorized him to aoeopt, and took oooasion to
express his senso of obligation to Mr. Prescott for his h earty
1 cooperation, and generally for tho services which lie had
'J rondored him. The next point that it seemed to mo I ought
j to have placed in proper order was an advance of $8,000
I madc to Mr. Edison on the 80th day of June. It was made
j by an arrangement through Gen. Marshall Lcfforts, then
| President of tho Gold and Stock Telegraph Company, for
J which Mr. Edison had previously done and was then doing
I ™oro or lcsa work of manufacture and invention. The 693
. Western Union Company having no account with Mr. Edi-
j son, and there being nothing in shapo to constitute what I
considered a proper basis of account, I authorized tho pay¬
ment to Mr. Edison of $8,000. It was done by the draft of
tho Gold and Stock Tologrnph Company upon tho ordor of
Mr. Edison, upon tho treasurer of tho Western Union Com¬
pany, and this was endorsed by Mr. Edison and presented
to tho treasurer of thoWostorn Union Company and paid on
tho 30th of Juno for lids $8,000. Subsequently, and in tho
month of December, I think, in an accounting between tho 694
Gold and Sloolc Company and Mr. Edison, ho wns allowed
a sum equal to tho $8,000, or perhaps in excess of it, for
somo inventions, and thus tho threo thousand claim passsed
from a claim of tho Western Union Company ns against
Mr. Edison to a claim against tho Gold and Stock Compnny,
and wns charged in tho account between tho Western Union
and the Gold and Stook and settled between thorn, and it
was then settled between the Gold and Stook and Mr. Edi¬
son. That is all that I hnvo to say as to that. Thero is ono
transaction that came up in tho month of July, and on the 696
8th day of that month. That was the application to mo on
tho part of Mr. Edison for a loan of $10,000.
Q. Go on and stato what that was.
A. Mr. Edison had made - application for a loan of
$10,000 for tho purposo of paying off, as wns alleged _
Mr. Butler: That wns what ho said ?
A. That wns what ho said, for tho purposo of paying off
a chattel mortgago for a like sum due to a Mr. Unger, who
160
696 bad formerly been my business partner, and at tbo timo of
which I speak was somehow connected in business with Mr,
Hamilton E. Towle, tbo engineer.
Q. Mortgage upon what?
A. Mortgage upon tbo shop, macliinory, equipment, etc.,
some shop at Newark ; and, in expectation of this applica¬
tion to be made by Mr. Edison to me, on my return, Mr.
George M. Phelps, the Superintendent of tiio Western
Union Company’s factory, had made a visit to Newark, and
bad prepared a schedule of the property which Mr. Edison
597 was to submit, and winch ho did subsequently submit to
mo ns tbo security for the loan of $10,000 ; after somo brief
consideration I expressed to Mr. Edison a decided disincli¬
nation to make a loan— so large a loan, certainly — upon
personal property in another Stnto and in tho possession of
the mortgagor, and expressed a desire to have something
else.
By Ur. Butler.
B98 Q. Mortgagor or mortgagee?
A. In the possession of tho mortgagor; ho said bo had
nothing else to offer mo cxcopt bis automatic ; wo had somo
; conversation about tho matter, and I advised him to soe the
! automatic people, bo having stated to mo in that conversa¬
tion that they had paid bint nothing up to that timo on ac¬
count of bis automatic inventions or automatic patents, and
ho loft mo for the purpose, ns I understood, of conferring
with those people ; and at a subsequent interview, within a
few days, ho informed mo that lie had mndo an arrangement
ggg to obtain his money.
Q. Give us all tho conversation. You say you advised
him. In what terms did you advise him ?
A. I think tho language I used was substantially this:
shall I state all that was snid by mo in that connection ?
Q. Stnto what you said. I want to know in what terms
you advised him.
A. " What I desire is that you shall have this money, and
I intond to help you to get it in somo way ; if these people
haven't paid you any money yet on that account, it seems
161
to me that they aro the proper parties to whom you should 600
apply for tins assistance;’’ there was also something said
nbout-they would prefer not to have a lien established
upon Mr. Edison s interest in the automatic by his obtain¬
ing a loan from us, and I expressed tho opinion that they
would not like to have such a lien. J
Q. Was anything snid ns to what you might do in caso
he did not get tho money from them ?
Ur. Butler: I supposo wo have all that was said.
601
% Thc WOkws : I think I stated to him to come back to
I ,aml Iot "i° kno*i n,ld I would see what I could do for
i him ; to that effect.
/ afl2'?Al’d 110 d‘d 00m0 bnok' 08 l’ou lmvo snid, a low days
j A. Yes, sir.
J Q. And you learned from him then that 'bo had mado
tho nrrangoinont?
A. I did.
MrQbSo°n?U flX th,S’ 1,10 8lh °f Jaly’ b’V •pedal, 602
A. Yes, sir ; I do.
Q. What?
A. I returned to Now York on tho morning of tho 7th
of Ju y, and I find that I wrote on that day a letter to Mr.
Hamilton E. lowle, to have him use his good offices with
Mr. Unger, not to press Mr. Edison for a few days, until
we could help him nbout this mnttor ; that wns on tho 7th of
July, and it was tho next day that I had tho interview with
Mr. Edison.
n'nnBrf0r0 ^ Edison toId y0U- w,lnt ho wanted tho 6°3
$3,000 for, on tho 80th of Juno?
I A. I do not roinombor anything specific nbout that.
Q. But Hint wns paid to him at that timo by your direc¬
tion, but through Gen. Marshall Lcfterts, ns I understand?
tion tlmt aU tlmt ,y0U wish t0 Bny way of expinua-
A. Yes, sir; that is all.
152
604 Q. Now, wo will como back to the period of which wo
■o speaking, and which was that in which you made tlio
l to Mr. Harney’s office, and met Mr. lieiil'; when wo
adjourned 1 had shown you the letters of Mr. Davidge,
and wo wore approaching the period when you met Mr.
Eoiif nt tho office of Mr. Barney?
A. Nothing had been said concerning the interview with
Mr. Davidge.
Q. Well, when Mr. Davidge presented you these letters
what, if anything, took place in respect to the subject of
605 the letters ?
A. Tlicro was but ono letter presented to mo.
Q. Well, with reference to the letter?
Mr, Sutler : That will bo under tho snmo objection, I
suppose.
The Court i Yes, sir.
The Witness,- Tho interview with Mr. Davidge, which
was in tho offico of Judge Palmer, of tho Mutual Lifo In-
006 suraneo Co., and in their building, lasted, nt least, nn hour,
I should say, and perhaps moro ; much of it was occupied
with a discussion of tho merits of nulomntio telegraphy,
and very little of it ns to what Mr. Davidgo had to sell ;
indeed, ho did not appear to understand tho obligations, of
which I had a general impression nt that timo that existed
between tho various parties in tho automatic ; there was noth¬
ing concluded, however, nt that interview, nor was any ar¬
rangement made to meet again ; but, from what had been
said to mo by Judge Palmer, and ono or two others of my
607 directors, added to what transpired nt this interview, I had
determined to submit to the Executive Committed of ’the
Western Union Co., for its special and specific consideration,
the question whether the Co. would entertain a proposition
to purchase tho control of the automatic.
The Court: Be careful, Mr. Orton, to state what occurred
between yourself und Mr. Davidge only.
A. I have now left Mr. Davidgo and thoro is a transi¬
tion from Mr. Davidge to Mr. Beiff, at the office of Mr. flno
Hiram Barney, who had been my personal friend for many 608
years, and whom I was in tho habit of meeting daily on tho
train. I was also very well acquainted with Mr. Boiffi I
preferred to have negotiations with a man whom I knew as
I know Mr. Beiff, and who was directly interested, as I sup-
posed, in the business, than with a man who, like Mr. Dav¬
idgo, who I supposed was merely a middleman. And I said
to Mr. Barney that I would like to have an interview with Mr
Beiff for tho purposo of going over the subject of this inter¬
view, of which I spoke to Mr. Barney in general terms.
609
j By Mr, Lowrey :
i Q. Why did you select Mr. Barney ? Was there any-
thing known to you, or supposed by you to exist in tho way
i of relations betwon you, Barney and otliors which led you
1 to select him ?
(Objected to ns loading.)
Q. Why did you select Mr, Bnrnoy ?
A. Mr. Barney had disoussed automatic telegraphy with 610
me frequently, and for a considerable period of timo, and
had stated to me that ho had some business of thoso people
in Ins office, and I know from thoso conversations that ho
was personally intinmto with Mr. Beiff and Mr. Barring-
Q. You mot Mr. Beiff at tho offico of Mr. Barney ?
A. I did, sir.
Q. Stato what took place?
A. Woll, I am obliged to remark in respect to that intor-
view, as I have done with reference to some others, that it is 611
only an occasional phrase that fixes itsolf on my mind ; gen-
orally what transpired Ihnvo very clearly in my mind.
Q. Well, you cannot remember tho words. His Honor
will permityou to give the substance ?
A. I requested at the commencement of this interview
tlmt we should not consumo timo in tho discussion of tho
merits of automatic, because that seemed to be, from a pro-
165
101
fi
612 vious discussion between Mr. Koiff and myself, n profitless 1
discussion, and I stated substantially the purposo for which
I desired this interview.
Q. AVhat did you state it to be? fi |
A. That, in brief, was this : after referring to what had ®
transpired in substance between Mr. Davidge, Judge Palmer I
and myself, the offer that Mr. Davidge had made, I ex- 1
pressed to Mr. Eeiff an indisposition to negotiate with a third
granger to me uusmess ol both companies. I
asked Air. llcifl' to stato how the titles were held, who were
618 the owners of what was called thonutomatic. I had certain
general impressions on that subject. Ho proceeded to stato
that the National Tolegraph Compnny had built and were
owners of a lino of ouo wire between New York and 'Wash¬
ington, that the automatic people were then using it under
neontraet with the National Telegraph Company, as I re¬
member. Ho gave them the option to buy this lino for
some figure named, I should say somewhere in the neigh- j
borhood of $100,000. That is a mere impression however
Also, that there was another party in tho automatic, con-
611 s, sling of Mr. Craig, Mr. Little and some associates one of
whom I think was a Mr. Grace, and 1 have tho impression
hat there was a Air. Anderson mentioned in that cornice- I
tion, though I do not know any such person ns Afr. Ander¬
son m the business. There was that group. i
Q. What did tlioy own? 1
mil'- .T1'03' °rnC<? .l,!° 1,11,0 paloms nnd doubtless somo '
other things of which I do not now remember. But I re-
member there was a Craig and Little party and interest j
616 , WnS 10 1,1 1,80,1 ero"P of P^onts, that he explained
",e'° 1101 °"',lcd by the Automatic compnny— at I
rm ,.,01 ]Joon transferred to the Automatic Company. |
bo inv™ 1 lb° ,mmo of Qoore° Harrington, ready to
be conveyed whenever any necessity therefore should arise, j
, " 11011 tl!oro "'ow the three groups ; was thero anything I
c!so oc tituting the property? was mere any iniug i
Jh * d°, 'f,'00'111 tllnt ll'ore was anything else stated re-
the subject. Notwithstanding I
the request that I had made at the commencement of tlio d
intorviow, wo did get upon a discussion of the merits, and 616
tho rolntivo merits of Automatic and other processes; and
the time that I could sparo for that intorviow was consumod
without reaching anotlior point which I particularly desired
to reach, and we adjoumod to meet tho noxt day, and did
meet, I think, tho noxt day.
Q. At the same place?
A. At tho same plaeo.
Q. Who were present at tho first mooting ?
A. Afr. Barney, Afr. Re iff and myself.
Q. Who were present at tho second mooting? at 7
A. Tho same pnrtics.
Q. AVhat took placo ?
A. I had, at the first interview, tho day boforc, inquired
the terms— tho price at which those parties would sell tho
control of that which Mr. Davidge had offered to sell a fow
days before. AVhcn wo got to that point, which was on tho
second day, I was asked this question— whether by Afr. Bar¬
ney or by Air. llciff I am not clear: “Now, do you desire
to know tho prico for controlling all of tlioso things?” I
said in substance, “I nssumo that tho control or all would 618
cost more than tho control of a part. It is my opinion that
whatever valuo there is in automatic for telegraphic pur¬
poses is in tho patents of Ah. Edison. Therefore, I would
like a price for tho control of Air. Edison’s automatic pat¬
ents ” — that part of tho concern which was kuowit as tho
Edison department.
By Mr. Butler:
Q. Tho Edison group?
A. The Edison group; tho word “group” is mino of to- 619
day, I think. I liavo read the testimony of Air. lloilf ou
this subject, and I desire certainly to avoid antagonizing
him, unless it shall bo absolutely necessary. He says that
no oiler was made to mo in his presence. I do not remem¬
ber whether Air. lleiff was present all tho time or not. Tho
offer was made to mo, however, by Air. Iliram Baruoy.
Q. Before you spoko of that oiler, what part, if any, did
Afr. Barney take, during those two days, in the talk and ne¬
gotiation?
!0 A. I should say that ho took a loading part.
Q. Mr. licitV sitting by ?
A. Mr. Boiff sitting by; Mr. Boiff participating and Mr.
Barney participating ; it was a freo talk between us three.
Q. Very well ; on this second interview, tbon, wliat did
Mr. Barney say in rospect to the prico ?
! Q. Mr. Orton, I read to you from the testimony of Mr.
Boill’, as printed at folio 1492, this question and answer!
621 “Q. What answer did you make to that?— A. I told him
‘'"’O were then negotiating with cortmn parties for tho
“ formation of a now telegraph company, nnd wo were under
“ some moral obligations to them, from which I did not
“ wo could bo released, and at that time I was not
11 prepared to discuss tho matter of price or sale at all."
Stato what is your recollection concerning tho conversa¬
tion with Mr. lteiff upon tho subject which I Imvo just read
to you about, if there was any such conversation ?
A. I have this general recollection concerning tho inter-
, v'ow> t'lnt Mr- Boiff was coy, and appeared willing enough
I 622 t0 lot Mr. Barnoy negotiate with m-
Q. No, what was said? Did Mr. Boiff say that to you,
or Ins understanding of that ?
A. Not that I remember; no, sir; I do not say that ho
did not say it, I simply do not romembor.
Q. Did you talk nbout prioo or sale with Mr. Eeiil’on tho
first or on tho second day ?
23 A. I did ; and while Mr. Beiff was present, Mr. Barney
asked the question, “ Do you want a price in money or in
stock, ’ and I said, "Either or both, it is not material
which.”
Q. Wlmt in particular, if anything, enables you to re¬
member that Mr. Beiff was present at tho time Mr. Barney
made this remark?
A. I cannot tell you why I romembor it ; I simply do.
1; Q. Did Mr. Barnoy make to you any offor or surest to 6
y°u my prico in rcspoct to the sale of tho automatic on that
occasion ?
Mr. Butler : I object to it, unless Mr. Boiff was present.
The Court: It is oxcluded with this qualification, unless
it appears that Mr. Beiff was present
Mr. Lowrcy: If ho answers affirmatively to that, I was 6’
going on to ask another question.
A. I would not like to answer tho question eatogorioally
unless I can answer one part of it ns apart from the other’
It is in tho alternative, aud the samo answer is not applica¬
ble to both. 11
The Court: lot him answer it in the alternative then.
A. Yes ; ho suggested a price.
Q. Was Mr. Beiff’ present?
A. I am unable to say.
Q, Was it at tho samo interview at which Mr. Boiff had
been present?
A. It was.
Q. How long was that interview ?
A. Possibly an hour ; probably loss.
Q. Do you romomber Mr. Beiff 's leaving tho room ? fl
A. Sinco reading Mr. Boiff’s testimony on tho subject, I
have an indistinct impression that he left tho room during
the interview, but whothor ho returned again, or did not, I
do not remember.
Q. Beforo Mr. Beiff left tho room, had thero been any con¬
versation in which cither ho or Mr. Barnoy had participated,
relating to tho prioo?
(Objected to as leading. Objection sustained. Question
withdrawn.)
168
169
g28 Q- You have stated already that Mr. Barney asked you j.
whether ho should mnko tho price, or the price should ho j
made in monoy or in stock. Did I rightly understand ;
you? f
A. Yes, sir.
Q. Now, what was said boforo or after Mr. Roiff loft tho
room?
A. That was said in Mr. ReifFs presenco.
Q. And was it after that that Mr. Baruoy suggested a
price, as you liavo stated ? y
g29 A. It was after that. J
Q. Now, then, I will put tho question ns to what it was [
Mr. Barney said ?
The Court: I declined to let the witness answer, unless it t
appeared that it was in Mr. Roift’s presence.
Mr. Louirey : I understand that. I will now put this .
question that it may be ruled upon. I
g0Q Q. Flcaso state what Mr. Bnrnoy said in respect to this
matter of price ?
(Ohjcoted to and rulod out, upon tho ground that it docs
not appear to have boon said in tho presence of Mr. Roiff,
and in view of tho fact that Mr. Reiil’ lias til ready stated that
ho was not prepared to discuss tho matter of price at all, and
then left. Exception taken.)
Q. Mr. Orton, I will now read to you some more from
the testimony of Mr. Reiil', ns printod. At folio : 1,489,
03] Mr. Roiff says: “Mr. Barney stated to mo that Mr. Orton
desired to see mo concerning telegraphic matters. I met
him. He dosirod to know who owned and controlled tho I
various patents thnt Mr. Harrington was connected with." jj
Will you stato whether nt any timo you asked Mr. Rieff j
who owned or controlled tho various patents that Mr. Har- I
rington was connected with? 1
A. I did not; Mr. Roiff was mistaken ; I did not know nt |
all during that interview how those patents were held. |
Q. Did you know before thnt interview thnt Mr. Har- fl
[ rington was connected with any patonts?
A. I think not ; I had general information that Mr. Har¬
rington was an interested party in the automatic, but what
his pcrsonnl relations to it wore I did not know.
Q. There was a company known ns tho Automatic Com¬
pany, was there not, engaged at that time in doing busi-
A. There was business being dono in tho nnmo of an
automatic company, but as to the fact of the organization,
or tho character of it, I had no information. 6
Q. Is it thnt that you refer to when you have just now
Enid thnt you knew Mr. Harrington had an interest in auto-
A. Yes, sir, connected with business of automatic tolo-
graph which was then hoing carried on.
Q. I pass to folio 1,490 and read question and answer.
11 Q. Whnt did you say ? A. Thnt Mr. Little’s inventions
wore controlled by tho Automatic Telegraph Company, in
connection with n contract with the National Telegraph
Company, nnd thnt part of Mr. Edison’s inventions were (j
controlled by Mr. Harrington.”
Q. Did Mr. Rieff say thnt to you, or any part of it?
The Court: You had better put tho -whole question. The
following lino is a necessary part of tho question, I think.
Mr. Louirey ; Well, not for my purpose. I liavo no objec¬
tion nt all to rending it. It is a statement of fact and not a
qualification ns to interest.
Q. Put your eyo upon the question. [Showing from tho
printed report the romnindor of tho answer referred to.]
A. Docs this question require a categorical answer ?
The Court : Tho question is, did tho conversation occur
which is detailed in the question nnd answer that have
been rend to you.
181
636 The Witness .- That is implied in the question and answer
which were read to me which did not occur. The conver¬
sation related entirely to automatic, and among tho explana¬
tions mado was that Mr. Edison’s patents woro held by Afr.
Harrington, not having been convoyed to the automatic
company.
Q. Was anything said as to Mr. Edison’s inventions in
general in that conversation relating to telegraphy ?
A. Nothing so understood by mo.
687 Q- Well, was anything said at all ?
A. I do not remember that anything was said, but I
should like to add, Air. Reiff and I rarely came together
without discussing tho speed of our respective horses.
Q. What do you mean by that? What was his horse?
A. Tho automatic was his fast horse, and the duplex aud
its possibilities was mine.
Q. In tboso conversations did anybody claim automatic?
A. Yes, sir; Air. Reiff claimed tho automatic.
Q. Did anybody claim tho quadruplox in those converse-
688 tlons 1
A. No, I do not remembor that tho quadruplox at that
time, was tuo subject of conversation.
Q. You said in general, duplex or quadruplox ?
A. I claimed duplex and its possibilities.
Q- Did Mr. Reiff or Air. Harrington on any occasion claim
to you that they owned tho duplex inventions?
A. Never.
Q. Did they oyor claim to you that tlioy owned any in¬
ventions other than those patents which woro in use bv
039 “10 Automatic Co. ? J
(Objected to ns loading.)
The Court: The question is asked not ns a moro con-
ST bUt °" th° qUCSti°n 0t 1,0tic°- 1,1 t,mt view I will
J- Tf. 1 ?Bnv“ tho question as it stands, I must answer it
affirmatively. Air. Reiff did claim, some time in the Jear
Q. When did ho first make that claim to you? „
A. I do not remeriiber, but I should say somo time in tho H
year 1876.
Q. Well, did lie mnko such a claim at this interview that
wo arc speaking of.
A. No sir.
Q. I call your attention further to tho testimony of Afr.
Reiff at folio 1,490. I will read the wholo answer, and then
will ask your attention to a part of it: 11 Q. What elso was
said?
A. Arr. Orton stated to me that ho desired to havo all tho fil1
information I could givo him about tho relation of theso
parties, and tho control of theso things, so that if anything
could bo done, ho wanted to know whom ho had to talk
with, instead of talking with a lot of directors cn masse, or
a lot of stockholders. Ho said tho only things ho valued in
connection with tho wholo matter wore Afr. Edison’s inven¬
tions; ho did not care about Mr. Littlo’s or anything tho
Automatic Telegraph Co. had ; that Afr. Edison was a very
ingenious man, but very errntio ; ho would like to havo him
entirely in tho interest of tho Western Union-Tolcgraph Co.
and would liko to havo matters so arranged that ho could ° “
put him under charge of Ah. Prescott, and ho desired to
know of mo what would induco mo to havo Ah. Harrington
and myself secure, to a satisfactory party, all Afr. Edison’s
inventions." Did you say to Ah. Reiff that you desired to
hear all tho information ho could givo you about tho rela¬
tions of these parties?
A. Very likely I did.
Q. Did you say that you desired this so that if anything
could bo done you would know whom to talk with instead
of talking with a lot of directors cn masse or a lot of stock¬
holders?
A. I do not think I snid that in that way. It would
havo been a part of the opening conversation that, having
been approached indirectly by parties to sell to us tho con¬
trol of tho automatic — that instead of dealing in thnt way
I preferred to deal directly with a responsible and interested
party.
Q- Did you say that tho only things you valued in eon-
H neotion with the whole ranttor wero Mr. Edison’s invnn !
H tions? |
A. Not in that connection, mid not in tlioso terms.
Q. In what term., mid in wlmt connection did you snv t
anything liko that? J J
A. After receiving Mr. EcifTs explanation ns to the way
in which these several interests wore held, mid pressing f„r I
a price, I was asked the question whether I desired a price !
to cover the whole, including the National Telegraph Co's
... h"c, the Xuttlc patents and the Edison patents. I said "No
615 I do not want the National Telegraph lino;’’ I did not
attach any value to it, nor did I attach any special value or I
importance to the Little patents; « Givo me a price for tbo
Edison patents alone. 11
Q. Did you say that you would liko to hnvo Mr Edison
Company'? ** iUl°r<!St °f th° WoStoru U,,io» Telegraph
A. I did not.
Q. Did you say that you dosired to know of Mr. KicIF
C40 2f ™ ' ,.hfm to lmV° MnHnrH,leton im«l him.
4 vontions? satisfactory party all of Mr. Edison’s in-
alrtl!!din0t, (0^°Ptm'th lb0 0XPlanation that I have
already made as to the automatic.
Q. Did you say that you would like to hnvo matters so
MnScoU vy°U C°Uld PUt Mn EdiS°n UI,dor 0,lnl'S°
.J'J. d1°,n0t rf,mo"lbor suo1' statement. Mr. Edison
j and Mr. 1 icsseott were working together at that particular
047 Q. Had boon for how long?
A. For several mouths. I should say some months.
n int8etlrr,ofr “* “■ g°°d *“ ^
(Foil lSa.) °,,ab,P 'm' 10 a factory party?"
A. My impression is that the first thing that was said on
the occasion of the second intoryiow was, “ Lot us got to (
business.” ‘
Q. As to tho romaindor— you may run your oyo over it
(Handing printed copy of testimony to witness.)
A. I desiro to repeat, in answer to this question, tho
answer that I hnvo previously made-that tho only inquiries
put by mo touching Mr. Edison’s patents related to tho pat¬
ents that Mr. Hcilf had informed mo wore held by Mr, Har¬
rington, relating to Automatic tolegraphy.
I 9' Did •you learn from iIr- Hoiff whether tho patents
which you hnvo referred to in your last answer wero in uso a
at that tiino any whore, by anybody ?
A. I cannot reenll what Mr. Hoiff said on that subject,
hut I doi ve 1 tl o | reso o from that conversation _
Jfr. Lowrey : I submit that is tho same thing ns saying a
that ho substantially said tbnt. . . *
Q. What did ho say substantially on that subject, if any-
tlnng ?
A. Tho answer I hnvo just given is what I have -
The Court: Don’t givo your implication from what ho
The Witness: I cannot recall tho language, your Honor,
ifr. Dickerson : Ho has nnswored what was tho substanco.
A. During this conversation Mr. Kcift' said in substanco
lmt they wero using certain of theso inventions of Mr. Edi¬
son s, and it is also my best recollection that ho considered
kern superior to tho patouts of Mr. Little;
165
652 The Court: It is perfectly plain how tho witness stands
with rofcrcnco to tho matter ; that ho understood that the
wholo subject matter of the conversation was Automatic and
nothing else, whatever Mr. llciff may have understood in
regard to it, and I do not supposo that all tho questioning
in tho world will elicit anything different from that.
The Witness : That is my understanding, your Honor.
Q. I road to you from folio 1,610 of tho evidence of Mr
653 Eciff, page 486 : " Q. Did anything occur at that interview
" ,t0 lond 5'0U to supposo that Mr. Orton might bo endeavor-
“ ing to scouro Mr. Edison's patents and inventions by nu-
“tomntic telegraphy? A I recollect that Mr. Orton jj
" mado n vory distinct impression upon my mind, that tho I
“ mnin obJcct °f ,lis interview was to see whether he could I
“get control or how ho could get control of tho brains of Mr. |
“Edison.” I ask you whethor, at that time, you had boon I
informed by anyone that Mr. Hoiff or Mr. Harrington had I
any control over tho operations of tho brains of Mr. Edison ? |
The Courts I will lot him ai
By the Court:
,r^'1?Ir'vouIJ lik° t0 nsk you this question : State wbotlicr
(j55 Mr. Edison „na then experimenting with Mr. Prescott, in
”°“0' “”w“"n u"'"
,JIr- : How long ? That was June, 1874, wasn’t j
TCB’ tUat U° lws already s»id, that ho had
boon for several months. I
they bc"an SUDae1,I0I>t to May 19th, 1874, that 656
The Witness: I would like to add a single remark, finish¬
ing up tins department of tho subject, if your Honor please
— tlmt nothing said on that occasion or any other prior
thorcto, had convoyed to my mind any impression ’that it
was necessary for mo to deal with anybody but Mr. Edison
himself, in respect to anything that ho might undertake.
Q. I call your attention to tho testimony upon pago 1,487 a.-.v
The question was: “Q. Did not the conversation isolate
wholly to automatic telegraphy ? A. Ho, sir.”
By the Court:
Q. I understand you, that you said Mr. Orton stated that
ho wanted to secure tho brains of Mr. Edison ?
A. I did not say that ho snid that; I said that was tho
distinct impression he left upon my mind ; I do not mean
to say that Mr. Orton said that in so many words, except in
tins way that ho said that Mr. Edison was a very ingenious 658
mini, and probably added other adjectives, but that he was
very orratio, or words to that effect, and that ho desired to
secure or would like to have Mr. Edison's entire interests
with tho Western Union Company, nnd that ho desired to
secure Ids services and plnco him under tho eliargo of Mr.
Prescott, who would tako caro of him.
By the Court:
Q. And ho wished to know what prior claims thoro woro
to thoso inventions or services?
A. “Ho did not put mo that question ns I romombor.” ^
Q. State whether at that time you had been informed by
anybody that thoro were any prior claims to any inventions
of Mr. Edison, except thoso you liavo spoken of ns in use
by tlie Automatic Company, or to his services in any way ?
A. The Gold and Stock Telegraph Company. With
thoso exceptions I hnd not.
Q- Aud Mr. Edison was at that moment ongnged in your
167
oou unnx, mm ns wont on tno duplox, ns you understood, for
the Western Union Telegraph Company ?
A. Uo was, on that day ; at that vory time.
Q. And had been since February, 1873 V
A. lie had been since February, 1873, less the interrup- I
tions and lapses that lmvo been previously referred to. '
ihcre was a great deal of the year 1873, during which ho
was not there, and during a part of that timo his exrcr
ments was carried on in his shop in Newark, I think. '
Q. 1 repeat to you a part of tho nnswor of Mr lieiff
Ofll which is as follows: "That ho desired " (that means yon)
to “’fr w lik?T‘° bavo Ma Edison’s om‘ro in¬
terest with tho Western Union, and that lie desired to se¬
cure his services and place him under tho charge of Mr
Prescott, who would take enro of him.” Did you ex¬
press the desire, or nny suoli desire ns thero stated ?
.Imnf.i 7-"°, ro“Ilooti<m of living expressed nny do-
siro of tho kind 1 hero certainly was no occasion for mo
to have such a desire.
882 The Court .-Just state tho faot.
it m BtUkr: D°"’t "rSU0, PerImPa !t may turn out that
The Witness: Thero may have been ; I did not know it,
Q. You now know, I beliovo, that thero are said to be on
daterl ln1"n l0, 'UO1'LlOm°C two instruments in writing, one
first sitrnedlwr’ 187°W‘ ^ ‘b° °tbor APriI 4th> 1871— tho
am seoot Sn Bo°rg° Hamngton and Mr. Edison, and tl.o
663 «l gn d by Mr. Edison. I will show you the two ex-
in,Vtta°l,0d 10 tho oomPlaint in this ease,
and Vn, , ni?n 13 calIod 10 plaintiff’s Exhibits A
A. I know they are said to bo ; yes sir
pn^r^ud\fwhat°mnmior^?nrn °f th° cxistono° of thcso
A‘ Ithink °°pieSof them "ore obtained in eonneetion
with proceedings that were instituted by tho Western Union n
Company in tho State of Now Jersey after tho brenkimrout
of what Mr. Sorrell called the "title fight,” some Uma in
January, 1875.
Q. They were sliown to you by tho attorneys of tho com¬
pany ns having been obtained from tho records ?
A. Yes, sir; I think they were shown tome by yourself
Q. l'lint was your first information as to them or their
contents, do you say ? * “
A. Certainly my first information ns to their contents ;
I do not recall that I tiad any knowledge even or their Gf
existcnoo before that time. 01
Q. When did you first learn that Mr. George Harrington
or any person claiming under him, elaiinod or had over
inventions'?" int°r°St ^ Edis0"’s duPlex or q'mdruplex
, A imPros3io" tlmt it was in tho month of January
18'°, "dor information had boon obtained by and throudi
yourself and othow concerning negotiations that Mr. Edison
hmU.adw.tb Mr. Jay Gould about tho first of January,
S|,,0k“.°f * Suit in *°™y- I suppose thero **
suit is? y° my Stntl"g in tllotlUCBtio11 wlmt that
Q- Ihe Western Union Company began a suit in Now
Jn '2! i C<nlrt.of,?lm"C(!ry. iii January, 1875, against
tio^ Ind . r<f - 'lm f'r°m Pnrling with those invon-
whicli thov all 0k ? n, 8Pe0lCo Pcrformnuee of the eontraot
winci, they alleged they had had with him, did they not? fl67
refer ?^‘,° bi“ °qUity- rl'bnt is thosuitto »hlcl. you
A. That is tho ono I refer to.
deMing^whh x'r. w°r ^ l0nn' tbnt a"y Porso" lmd been
tions nr „ ■ . ' EdlSOn for 1,10 Purchase of these invon-
volve Id th s su t ? * ' U ° “ 1U1 l0V~tl 0 H i"
f8 A' * tl’lnk 1 reccivcJ wlmt I might call a hint of it on ’
the lllh day of January, 1875 ; I fix that day because it '
"■as Monday, and it was the first day that I returned to my ?
oJIico from a tnp made to Chicago. 3 |
Q. You know Geu. Thomas T. Eckert ? j
P3nHMM at P,rTU tllC Pres,donl of ‘be Atlantic and !
Paeifio lelegmph Company, tho plaintiff, is ho not ? i
A. 1 know him, and I understand that ho is tho l’resi-
dent of that company. 1
i69 Q. What was his office in tho Western Union Telegraph
Company before ho became tho President of tho plaintiff? '
siou H GBni!r“ SuPOTintoudcnt »f tho Eastern Divi- jj
wW f 8 GC',en Sul>°™tondcnt of ‘bo Eastern Division,
what, m generhl, were his duties and powers 7 I
ofd.e n„r8miCl,mrg° f the "’aintonaneo and operation
of the lines, including tho principal mnnagomo.it of tho
eoSetio T 'V,itllin jurisdiction, and also of tho
construction of such now lines as from timo to time might
670 bo ordered within that territory.
By the Court ;
Q. By “ within that jurisdiction,” I suppose you mean
I within tho limits of tho Eastern Division 7 ^
A. Yes, sir ; within that territory.
Q. 'What States did that comprise ?
T i?° b,°,U“dnr,ic8 of th° Eastern Division at that time,
W,2r, 1° T 03 f°ll0'VS : Startine the City of
Washington, taking tho eastern shoro of Maryland all of
W1 WheeH TP” t,1‘° BaUim0r° nnd °hi0
^ ;,ld Earkersburg, an arbitrary line drawn
then the qS „ °LFenylvani". through Altoona, I think;
lines Jn tho V w°'i °aSt °f BuflhIo> includinS the
( a Chv of a n "!1!? and Central Bailway to Buffalo
S tl " all J ”' 1 tldUkl Was iD tba Central Division) ;
Sits, " ■»> *»■*
i‘w '! » wj a*i oi»c in n» ■
service of the Western Union Company 7
I A. His resignation was handed in on tho lltli day of 672
t January, and was nccopted within a day or two thereafter.
j (It is admitted that Gon. Thomas T. Eckert was elected
tho President of the plaintiff’ on the 14th of January,
1675.)
Q. I dcsiro to ask you if you have known of a publica-
calion called tho Journal of the Telegraph ?
A. I have hoard of tho Journal of the Telegraph, and (
another called tho Telegraph Art.
Q. What connection has tho Journal of the Telegraph with
tho Western Union?
A. It is published at tho office of tho Westorn Union
Telegraph, and its expenses, in so far as they oxcccd its re¬
ceipts, nro homo by the Westorn Union Telegraph Compnny.
Q, Who has boon, for a series of years prior to January
1st, 1876, its editor?
A. I can givo you the names of tho persons who liavo
been its oditors down to tho present timo; but, without re- q
ferring to tho paper, I do not remember when tho term of
one commenced nnd another terminated.'
Q. That will do, sir.
A. Tho first editor was Mr. James D. Heed.
Q. What commotion had ho with tho Tologrnph Com¬
pany — the Westorn Union?
A. Ho was an omployd.
Q. In what department?
A. He had olinrgo of tho Journal of the Telegraph during
tho timo that his name appears as its editor. 6'
Q. Had tho oharge of tho Western Union Telegraph;
how?
A. Had charge of tho Journal of the Telegraph.
Q. I know, nnd what else had ho oharge of beside?
A. I do not think that he had anything else at that timo ;
it was a pretty good occupation for one man.
Q. Employed and paid by tho company ?
A. Yes, sir.
170
i Q. Who next?
A. Mr. Frederick J. Grace.
4, frt
4 Si “ *-»■ "f <*• *— i
4 -Xr” “ 0<“” *“«i "M l» g" i«.
677 n ' di°d’ sir; 1,0 dietl la3t Fall.
“ ym “i"”' »« »
A, Yes, sir.
Q. Who next was editor?
A. Mr. Ashley— James N. Ashley
wiriT °tb0r 00"n00ti°"- tImn 03 edilor. with the
wlmicS “rtirSs'^0 n • UmS 'rd -V connection
678 Mr. Heed and Mr. g2E bo^La ,C°mW
company in other caSSe^^X~‘°d •V,t\,L°
that particular duty ^ "°ro aS3l8ned to
Q. Havo* tbT’I,?0 "0t rcmcmbor that ho llas had.
.^3=^ASS
Q- You among tho number?
A. Yes, sir.
A. 5Sram°nS tb° numbor7
Q. Frequently?
PrL^1' 1,8 Iam concerned
1 reseott more frequently.
Q- In 1878, stato whether you
show— or tlicro w ‘ - J
ot frequently; Mr.
",rol° “rticles tending to
“holes, in the first place, in that jour.
A. My memory as to the contents of tho paper so far
back, General, is not good enough to enable mo to -avo an
intelligent answer to that question ; I think the paper itself
would be the best evidence.
Q. Did you yourself adopt one of those articles in your
report to your directors that year?
A. I do not remember.
Vie Churl ; ^
Produco the paper. Ho is entitled to havo it before
him.
Mr. Butler:
Yes, sir, lie is entitled to that.
(Paper produced and shown witness.)
Q. That is your report, is it not, for that year ? 6g,
A. This is tho report for tho fiscal year of 1872-3.
Q. Fading at what time?
A. The 80th of Juno, 1878.
Q. And for whatever thcro is in this roport you are re¬
sponsible ?
A. I do not know whether that is a question of faot or of
law.
Q. No, sir; but responsible is a mattor of faot, ns you
adopted it and put it forward.
A. I certainly authorized the publication of that pam- Cgc
pblct.
(Marked for identification “ Z 4.”)
Q. On the Cth of September, did you writo a letter to tho
Postmaster-General, Mr. Crcswcll, upon telegraphic mat¬
ters?
A. I guess not
Q. Of December, did I say September?
172
084 A. I remember having written tho Postmaster-General. I
Q. Ami you published subsequently?
A. Yes, air, that is tho paper,
Q. And this was published by tho Western Union?
A. It was.
Q. And tho samo question in regard to that, whothcr you
aro responsible as mattor of fact for this ? I
A. I believe I wrote tho wholo of that, Gonoral.
085 mtSC''SOn: EXC°PtinS ^^onda, I suppose, or tho
or nppoiidix '''° qU°Stion : didn,t yoii "rrito tho addenda
A. I think I did, sir ; I believe I did. There is some-
trne^ fi l0'° -1. d'd not "’rito> booauso contains ex-
tracts from authorities.
“n.7» tbnt wLioh purports to bo text you wrote
and t hat wlueh purports to be extracts, on which the text
commonts, you did not write?
080 A. Yes, sir.
(Paper last referred to is marked for identification » Z0.'1)
cnivlryrrby,lhis «*W#*»«l»d -appendix D,’’
compete with Sf^i.^etoyr'11'0 °°Uld “°‘
0 ramombcr what is in the pamphlet now.
tapSiSTiK,' ““ “
,m ..iS2,;'‘,,,in.k <i» b i.tai
at all it should be read 'VUUeSS’ a“d U “ iS ‘° b° UScd
witness nndVhn. “T- "°T attomPting to got tho mind of tho
SSSte b« -mory. I
do not ask him wlmt ho wrote _
what tho purport of what ho wrote w
MLmrey: That is immaterial
at time, I am asking
The Court: Tho pnper itself does not nocossnrily show fl
they. c. d.
The Court : It may bo immaterial, and still on cross-ex¬
amination it may be pormissablo to inquire in respect to it
Ho may ask was that thopurposo which ho had in view in
writing it?
(Witness looks at tho pamphlet referred to.)
The IPiVness .- It seems to me that tho purposo of this
paper is summed up in this soutcnco.
Mr. Butler : I hnvo not asked you that. Will you an¬
swer my question ?
The Court : I think that is a proper answer.
The Witness : Tho real question, then, in this case is,
“ Wlmt docs tho automatio process involve in order to q
onnblo it to delivor the President’s messngo complete in Now
York within sixty minutes of its receipt at Washington
and this was the discussion of the transmission of _
The Court: That was tho purpose thnt ho had in view.
Q. I will ask you the question again. Wasn't your pur¬
pose in putting forward this to show that automatic could
not compote with the Homo systom in eolority ?
A. It certainly was to show thnt it was not a dnngorous g!
competitor of tho Morso syBtom.
Q. When I desire to bo informed of its danger I will ask
you. I must repeat tho question and ask for an answer — a
plnin question to a plain man. Was not the purpose to
show that the automatio systom would not or could not com¬
pete in celerity with the Morso system?
2/ie Illness; Now, if your Honor please, thnt question
cannot bo answered by yes or no.
174
176
Mr. Butter: I ask you to answer the fact.
Mr. Butter: I have used three terms, "automatic,"
11 Morse ” and “celerity.”
693 Mr. Lowretj : And “ compete.”
Mr. Dickerson : « Compoto " is the diflicult torm."
Q- " Compete." I am instructed furthor. Do you un-
• Jfcrstand tho meaning of "compete?”
il-A- Yes, that is my business.
II Q- Do you understand tlio meaning of “ celerity ?"
||A- Without any connection with “compoto,” is tho
|®int to wiiioh my explanation was addressed.
S||Q- y°ry "'o11- Then I understand it. Wlieti I put tho
if n ifl S° ^ WIint t0 'Jr‘ngm'y mind nnd l'ours 'n conjunc-
lfj|A. That is what I desire.
Do you understand to "compoto in celerity” to mean
profli”biy ns fns*- d° y°u understnnd
Q. Very well. Now then, substituting for this question,
nos » S01’d,ng messnSea economically and profit-
896 ably as fast, was not your object in writing and publishing
h.s pa or to show that the Memo system in that regard
was better than tho Automatic?
A. Yes, sir.
8°i°d' Av ' lhis lettor ",ns "'ritten December
«th 1873, and immediately published, was it not?
A. I think so.
Q- And laid before Congress?
Congress08' Sir’ WaS ^ beforo public ; that includes
Q. And on raembors' desks ? 6
A. I do not romember that.
Q. Did you ever see Mr. Murray in your life, to speak
with him, until after this suit was commenced ?
A. I think not, sir.
Q. Did ho communicnto with you except on ono occasion
in writing?
A. I do not even remember that lie did that directly.
Q. Did lie not write you a lotter in the winter of 1874,
just before your leaving for Chicago ?
A. I do not remember tho fact. 8!
Q. You do not retnombor that you over received it?
a A. I do not ; no, sir; my nltcntiou not being called to it,
I I have not put it upon tho files.
Q. Will you look and seo if you can find it in your
files?
A. If you will bo kind enough to have a memorandum
given mo wlion I lenvo tho stand I will endeavor to do so.
Q. Did Mr. Murray evor communicnto to you except in
ono letter through Mr. Miller?
A. I think he has communicated with mo through Mr. Of
Miller.
Q. I menn in writing j I do not care what Mr. Miller said
that he said ?
A. I do not remember that I evor received a lettor from
Mr. Murray through nnybody.
Q. Did not Mr. Miller show you ono letter just beforo
you left for Chicago from Mr. Murray ?
A. Ido not remember; ho may linvo done so.
Q. Do you remember ever seeing any other to whioli
Mr, Murray’s signature was put ? 69
A. I do not romember.
Q. Now, Mr. Miller, for a moment; who was lie? What
was his business ?
A. Prior to some timoin 1876 Mr. Miller had beon, for
two or three years, tho Secretary and Treasurer of tho Gold
and Stock Telegraph Company.
Q. Beforo that had you and ho any business relations ?
A. Mr. Miller and I were, years ago, partners in tho book
176
177
at Auburn and Genova, and in tbo city of Net
700 business, ;
York.
Q. And did that partnership continue down to the tin
that he took the Gold and Stock ?
A. No, sir,
Q. Stale whether the -Western Union controlled the Gol
and Stock Telegraph Co. in tho year 1873 ?
A. Do you ask did it control it 7
Q. Yes, sir.
A. The Western Union never owned n majority of tl
701 Gold nn(1 Stock Telegraph Company.
Q. That was a question I did not ask, sir ; did the We:
v ,ll T10nC°n ’ tlir°Ugh i,S0lf- nnd trough means t
winch I can call your atten lion, if necessary ?
A The officials of the Western Union were made b
“C” :'xoow s“-'1" *“■ •' *
Q- State whether the stockholders, the officers, and tin
A. I do not desire to be technical, General, but I do nol
understand what you mean by the word “control.- Wc
had no power to secure tho control, as we did not own n
majority of the stock ; I do not remember that there was
“m0ns thu sto°kholders as to who should
bo elected to any position in it.
tl,nQGnYlhy,,IOmTni?0ti0anj’' ,,ow» “R Orton i did not
eontro°— J Stook Tcle8™pl> run under the substantial
708 A- Practically it did j yes, sir.
Q. And this Mr. Miller was tho secretary of that com¬
pany and treasurer 7
A. Up to some time in 1878.
Q. What time in 1878 did ho cease 7
A. I do not remember.
Q. Did ho until 1874?
A. It was before 1874, in tho fall of 1878.
to?,.1 7 f“1]’ do y°u mcnn before tbo 1st of January?
Didn’t Ins time oxpiro then?
A. No, sir; I should say that bo left that position in
September or October, but that is a mere impression. It is ?04
I a mnttor that can bo easily ascertained.
Q. Wo want to get your best knowledge about it. Now
will you tell mo in order to fix somo dates, ns well as you
can, what time you ever first talked with Mr. Edison upon
the subject of telegraphic inventions 7
A. I am not now able to fix the date when I first talked
with Mr. Edison. Wo talked upon tho subject of tele-
giaphie inventions on almost every occasion when wo met.
Q. That may be. That is not tbo question I asked.
When is the first time that you can tell me that you ever 705
talked with Mr. Edison on that subject 7
A. You mean of telegraphic inventions generally?
Q. Yes, sir; anything about his making telegraphic in¬
ventions?
A I should say probably ns early ns 1870, but whether
it was 1869 or 1871 1 have no fixed impression,
Q. Well, that is sufficient for my purpose. Tlion ns far
back as 1809 or 1870, ns tho case may bo, you nnd ho wero
talking upon theso subjects ; bow frequently do you think
down through 1871 and 1872 7 708
A. Well, not very frequently. Theso interviews wero
casual ones at tho office of tho Gold nnd Stock Company,
which at that time was, I think, at 01 Broadway.
Q. And you knew that he bad invented a very ingenious
system there, didn't you?
A. Do you mean in connection with the Gold and Stock 7
Q. Yes.
A. I knew that bo was making inventions for tho Gold
and Stock Company, nnd that they wero being put to use.
Q, And that they were ingenious, nnd you ncknowl- 707
edged inventivo power 7
A. Certainly.
Q. Did you say anything to him in the years 1871-1872,
about going to work for tho Western Union?
A. I liavo no recollection. Ho was working at that time
for the Gold and Stock Company.
Q- Did you not know at that time that lie was working
over in Newark for somebody else, too, or for himself?
A. I do not think I knew anything about it.
178
179
708 Q. Didn’t you believe or lmvo information to tlint effect?
A. I lmd tho general impression that Mr. Edison was
running n shop— if that is a proper phrase — and that lio
was doing work for customers who called upon him for it.
Q. Didn’t you have also a general impression that ho was
running a shop, making inventions ?
A. I certainly know that ho was making inventions.
Q. Well, I do not mean now to confine myself to Gold
and Stock. Pass these. Other than Gold aud Stock in¬
ventions?
709 A. Dow much I do not know on any particular occasion
—is a much larger sum than how much I do ; and I cannot
recall how much I had, as far hack as that, concerning Mr.
Edison’s -
Q. Well, sir, without going into tho quantum, tho amount
—Did you know anything on that subject or linvo any im-
formation on that subject?
A. I do not think 1 lmd any information. Certainly no
specific information. What inferences I might linvo drown
from these conversations, I am not oven able to call up, if I
710 drew any. 11
Q- you say now that on tho Gtli of February, 1878,
guided by an exhibit, he produced you certain matters con-
coining duplex telegraphy. Had ho not shown you draw-
1878? °Xplanatioils 011 tlmt object before Fobruary 8th,
A. I think Mr. Miller had brought mo somo skolehcsj
that is my impression, prior to February 0th.
Q- And had not Mr. Edison himsolf boon with you?
711 „7i ip,, n°1’ My u,ldo' Ending was that Mr. Edison
711 sent Mr Miller to mo with somo sketches, or perhaps in tho
first nistnnco without any sketches, or perhaps Mr. Miller
came on fits own account ; I am not clear ns to that But a
conversation about Mr. Edison and his ability to make somo
inventions m duplox telegraphy was had with Mr. Miller
prior to tho writing of tho letter of February 0th.
Q. I want to get your whereabouts as well as I can during
m, W'10l° of,1873' You were hero on the Gtl, of February.
When was the first timo you left for any place after that?
A. I do not remombor. I liavo notloolcod at tho records 712
with reference to ascertaining that.
Q. I do not mean to bo gone for an hour or a day or a
weok, but for any considerable absonco?
A It is my impression that I was gono two or three wcoks
in the fall— in tho autumn of 1878, through Missouri and
Kansas to Colorado. But whether it was 1872 or 1878, at
the moment, it is a more impression.
Q. Will you try and fix that dato as well as you can.
Q, Well, tho first nbsonco you think you had in 1878 713
was in tho autumn ? ,
A. I do not desiro to express an opinion ns to whether
that was the first nbsonco.
Q. Is that tho first that you remombor ?
A. It is tho only one I remember at the moment ; and
I do not now fix that definitely ns in 1878.
Q. But will you fix it ns well as you can do it ?
A. I will ondcavor to do so.
Q. You went to Europo in tho spring of 1874 for your
health, didn’t you, among other things? 714
Q When woro you taken sick and confined to your
room-in 1874, or 1878, as the ease may bo ?
A. I sailed for Europo, I think, on tho 28th of March.
Q. I will got the timo when you wont ; I am now asking
tninly for two weeks before that timo, and I wont from my
house, I think, to tho steamer ; I do not think there was an
interval in which I returned to the office, d*™®*1^* 715
have gono there in a carriage and come back egain.butl
do not remember the fact, nor do I remember a tin, mo-
meat how long I was confined to my house by the illness
"it you not confined from about the middle of
February, and did you not have a doctor?
A. I cannot answer the question now ; I have no definite
recollection concerning the timo ; my letter books and my
716 stenographer's notebooks will show whoa X did wort
although it does not show whether I did it at my house or
at my office. J
. 9; 1 ‘ako il| t,ml 113 11 3i°k man you did not receive maoj
visits at your house ? 1
A. X am sorry to say I did.
ft No more than you oould help ?
A. No more than I could help ; no, sir.
Q. You did not go to the offico to do work after you
were takon sick generally?
717 A. It is my impression that after my sickness became so
IZTn™ ? °°"1fin0Tm0 10 my bouso- I did not go to
. dioo, but that I wont from my house directly oil board
slnj) ; that is my impression.
Q. And thon roturned on tho 24th of May ?
ortr?* 1 1 a"iv,od in No"’ York on Sunday the 24th
r May, 1874 ; wont tho same ovcning to Irvington in tho
°ountry, whore I stayed during Monday, and my fimtap-
pearai^at the offico was on Tuesday mining the 28th of
ft Wkon wore you absent again ?
ofir iX°W Y°rk' 1 tLiuk' °“ tbo zoning of tho 18th
ft Tor whore ?
A. I went to Chicago and to St. Paul.
Q. How long wore you gone on that occasion?
Julv LTr /? my offio° 011 tbo morning of tho 7th of H
Q. Did you lcavo again, and whon?
710 A. On tho 29th of March of the following year _
a i>eUMS,y°U Imvo f°rgotton, hav’nt you?
A. Possibly I may have.
olfabout X°f n‘t0“tion- 1)0 ion know you went
1874 l aS> day ®ecombor, to Chicago again, of
AtJi4, as wo liavo loarned hero?
A. Yes, sir, I did.
and^ tvent'any where'? bCtWC°n t,,eSe y°U '°ft
reotnoIettn°tr0m0mber' 1 “V b™> done so. I do not
Q. I moan to bo gone for three or four woeks ; of oourso 720
I do not moan when you went to Washington or to Boston
or wherever you wont -
A. But my opinion is that I did not go for any such trip.
Q. Thon you left on tho ovoning of tho 80th, was it?
A. The 80th or 81st I think it was.
Q. Of December ; and you came back so ns to bo in your
offico again on tho 19th of January ?
A. On Monday, tho lltlt. I reached my house in tho
city on Sunday morning, tho 10th.
Q. And enmo to your office on Monday, tho 11th ? 721
A. Yes, sir.
Q. And at that timo you rccoivcd what you oall a hint
that somebody had boon buying duplex and quadruplox j
whom did you rooeivo that from ?
A. I am unable to trace that to any particular person. I
saw a groat many people on Monday morning ; having boon
absent for a week or ten days, and people knowing that I
was roturned on that day, thoro wore a great many waiting
t0Q.°You are oortain that you received that hint on that 732
day?
A. I tliink I did.
Q. Pretty sure about that?
A. That is my opinion. . ,
Q. Is it an opinion from memory or only from reasoning <
Havo you a rcmombranco, in other words, or is it only mat-
tor of reasoning?
A. It is not so much the memory of the speoifio hint ns
it is of tho hint and its surroundings which came up on
that day. 723
Q. I am fixing tho time?
A. I think it was on tho 11th. _ . ,
Q. You cannot givo us any information ns to who gave
' J”i“! I .» unab.o * IT - 1- j
make furthor answer. I used tho word “ hint Perhaps M
“ rumor ” would bo a better word. M
Q. I only used tho word “hint” boeauso you did, and X H
folt mysolf bound to take your statomont. ■
182
724 A. Cortainly— a hint or rumor. i
Q. Now, cxaotly, what was tho hint or rumor which you
received on that day ?
A. I think it was to the effect that Mr. Edison had gono
over to tho enomy.
Q. Well, ns you did not care particularly about Ids brains
you lot him go ; but that anything of his inventions had
gono to the enemy ?
A. I do not want to admit the implication in the ques-
725 Q. I do not moan to catch you in that way.
A. I do not wish to be understood ns saying at any time
that thoro was over a period whon I know Mr. Edison that
1 did not enro for his brains. It was only a question of
where I went to get them.
Q. What I desiro to ask you is simply this: Did you un¬
derstand, from this hint or rumor, that his inventions had
gono to tho enemy ?
A. My best belief on that subject is
Q. Memory, I would like, sir.
728 A. Well, my boliof is based upon my best memory.
Q. It might bo argument ?
A. 'i'hnt tho rumor was to the offeot that Mr. Edison was
actually in negotiation with parties adverse to us or had
already made somo transaction with them ; but it was very
Q. Now, I want to ask you another question upon this
to which I call your careful attention. Mr. Mumford was
you Vice-President, wasn’t he 7
A. Ono of them.
727 Q- Was ho the managing man whilo you wero gone?
When tho President was away, which Vico came into
play ?
A. l’ho by-laws of tho company provide that tho Execut¬
ive Committee shall designate ono Vice-President, who in tho .
nbsence of tho President shall disolmrgo his duties; whether
there had been any such designation at that time or not I
cannot state now.
Q. Was Mr. Munford generally designated to takcobarge
I
189
when you left? You did call yonr committee together 728
whenever you wont away for a fortnight, did you ?
A Tho committc meets regularly without calling toge¬
ther every week at least once. Mr. Mumford has been de¬
signated and other gentlemen designated. I should say ho
had not been designated as often as some others.
Q. Did you receive a message, or did you not reeoive a
message from Mr. Mumford, during your stay at Chicago,
that Edison had sold out, or words to that effect?
A. I do not remember.
Q. Will you swear you did not? 729
A. I will not.
Q. And your memory fails you whotheryou did t
A. I have no recollection of having received such mes-
Sn<Q.- But you have no such recollection on the point that
you could stnto whether you did or did not. Now, didn t
you hasten home on account of that message?
A. No, sir ; I did not hasten home bn account of any
Q. Wasn’t it a portion of tho reason of your short stay at 730
Chicago, and abroad, that you had learned that Edison had
gone over to tho enomy ?
A. No, sir. Shall .1 give you the reason ?
Q. If it was not that, I havo no interest in it, sir.
A. I was taken very ill at Chicago, and required tho
attendance of a physician all night with other attendance;
and I look the train tho next afternoon, fearing that I was
likely to be ill for somo time, and thinking tho best place
k^AndVft immediately for homo os you have told us. 781
Very well, sir, would such a message, if sent by telegraph,
appear on your books?
A. I do not know whether it would or not, General.
Q, Oughtn’t it?
A, We havo been destroying messages up pretty snug
lately, you know. . , ,
Q. I thought thoso were only politician s messages. Did
you destroy your own ?
2 A. Oil, yea, sir ; wo were no respecter of persons in that ,
regard. |
Q. Then, whilo you would destroy the messages, if you
chose to, for a good reason, did you destroy tho fact thnttho I
messago was sent. Would you destroy that sort of re¬
cord?
A. I cannot answer that question definitely to what ex¬
tent tho records of the messages aro destroyed, whether thoy
are destroyed up with tho messages ; but it is my impression
3 that now they nro both destroyed together.
Q- Is a record kept of general messages ?
A. A record is kept of tho general messages, bull cannot
state whothor tho record is kept of tho sorvieo messages of
our ofiico or not
(Recess taken until 2 o’clock.)
734 After Recess. |
i Q. Wo were asking at the adjournment as to tho do- !
struotion of books and papers. I suppose that tho destruc¬
tion of thoso books and papers went no farther than thoso
books and papers which showed messages sent and mes- j
snges returned ?
A. I presume that it docs not. I don’t quite understand
you.
Q. You have no idea that it did ; you did not destroy I
your books of account between your company and other
’85 P00l)le?
A. No, sir.
Q. You did not destroy your pay rolls and pay accounts, ;
and all thoso things ?
A. Wo do not destroy them ns oloso up as wo do tho
messages, but tlioy are destroyed from time to time.
Q. You did not intend to destroy those — I mean simply
your pay rolls of the operators?
A. They are destroyed from time to time, yes, sir. ;
The Court; When they become old books of no vnluo 7g6
you destroy them ?
A. Yes, sir. We mean to do a cash business, and thoy
aro paid or not ; and after a time thoy cease to have any
Q. Havo you any knowledge that books and papors of
your office showing tho business of tho office during Gen¬
eral Eckert’s Supcrintcndcncy havo been destroyed— I
mean now books of account, leaving out messages?
A. I havo no specific information on that point. It is a
matter that I can inquire about 737
Q. You don’t know that any such thing has been done?
A. No, sir i I do not
Q. Now, sir, did not your company keep during 1878
and 1874 an exact account of all work done on your
lines?
A. Wlmt kind of work?
Q. Any kind of work.
A. Do you menu the transmission of messages?
Q. No, sir. I mean if anybody was operating your lino,
would not your books show it — who operated it so long, ^
etc.?
A. I think they would.
Q. Mr. Brown kept thoso books, did ho not ?
A. I think not. Mr. Brown is a District Superintend¬
ent now, and he was then tho manager of tho Now York
office.
r Q. They were kept under his supervision?
A. Yes, sir ; in order they would come undor his super¬
vision as tho manager of the office.
I Q. Ho would have tho control of that, so that if an ope¬
rator were employed upon a given work, especially if it 7g9
were extra work, your books would show it?
I A. I don’t know.
Q. They ought to? ,
A. Would show what kind of work ho was engaged
upon?
Q. Yes, sir ; show what ho was about
A. I supposo thoy would show what circuits ho worked;
if he was doing what you call extra work, there would bo
740 some record to show what ho was about, but as I have my¬
self never participated in beeping those boobs, and am not
familiar with thoso records, I Bpcnk guardedly, nud for no
Q. I have no interest or desire that you shall not know
exactly the purpose for which I ask this : It is for the pur¬
pose of showing your books would not show nil the timo
Edison was using your wire at night?
A. I don’t know whether they would or not.
Q. They ought to?
741 A. Not necessarily.
Q. Why not?
A. The object of having Mr. Edison uso thorn at night
instead of tho day timo was duo to tho fact that at night
there is a considerable portion of tho wires for which tho
company linvo no uso, and thcro would bo no necessity for
keeping a record as to what was being dono with them.
Q. Would not your operators bo there operating them?
A. Yes, sir ; if operated at ono eud.
Q. That would be extra work?
A. It might not be extra work. It might bo regular
742 work.
Q. Is it regulur work for operators to assist Edison in his
experiments?
A. It might bo.
Q. Is there anything, to your knowledge, on tho books
of tho Western Uniou Company which will show whou Mr.
Edison lmd tho facilities of operators to aid him in his ex¬
periments ?
A. There is not to my knowledge, and thero may bo
without my knowledge. My knowledge does not extend
1748 to those details.
Q. IIuvo you ever examined to see?
A. No, sir.
Q. Have you auy means of knowing tho value or cost to
tho Western Union Co. of such facilities that wero given to
Edison ?
A. That would depend altogether as to tho character of
tho records that have been mado with reference to them;,
if tho records were complete, possibly an approximation 744
might bo mado to tho value.
Q. Did you not charge them to him?
A. I think not.
Q. Have you ever olmrged them to Mr. Prescott i1
A, I think not , , ...
Q nas ho ever paid anything since he has been joint
owner here, for the uso ortho wires in carrying on theso ex¬
periments?
A. I think not.
Q. Has ho ever paid anything for tho uso of tho opor- 746
Q. Does not your book show where in your shop you
mado machines with which theso inventions could bo ear-
rieA.°Thoro are doubtless some records in tho shop on that
SUQ.01 Ought thero not in your shop to bo a record of ovory-
tH A? I cannot undortako to say whether it ought to bo or ^
n°0 In tho carrying out of your business— in tho regula-
tio?of tho business of your company, do you
yoor books to bo so kept ns to show what has been dono m
your shop ?
A. Yes, and no. .... ■>
0 Give mo tho yes part, and thou tho no t
I The books are intended to bo so kept,. orshouH be so
kept, ns to protect tho interests of the company , ■
- business for the as 747
^ is the desireothat
these records should bo complete; but to s„y a
i. kept of .11 '“f ° l wliicU
Hsahtar-a1
718 should pay to him for it, and you woro contributing towards
that invention at the snmo time; was there no record kept
of what it cost you as an elemont of that valuo which the
arbitration should fix ?
| £ mctln r°r 1,10 PurPoso of having that element?
A. I think not.
Q. Was there no record kopt at all for any purpose of
that sort? 1
A. Whatever records woro kept woro such ns tho system
749 of doing tho business would provide for, without reference
to the particular uso that was being mado of these facilities
or this labor.
Q. For instance: you go and order Edison to linvo cer¬
tain keys, relays, soundors, machines made, and iio goes to
your shop and has them made; would thcro bo no record
of that?
A. I cannot say ; I presume thoro would be.
Q. Will you do mo tho favor to allow mo to seo those
records?
760 A. That is a question that I do not wnnt to nnswer hero:
I do not know whether I should or not; I should do what
ever tho Court dircoted or counsol advised.
Jfr. Zowrci/: In his character of witnoss he cannot do it.
He will do, of course, what bis counsel advise him. I pre¬
sumo there will bo no objection to it.
Q. You aro not only a witness, but arc tho President of
tho Company nnd the chief oxooutivo oflicor?
A. Yes, sir.
751 Q- Will you produce thoso records ?
Jfr. Lowrey : Tho witness lias no moro custody of tho
books that are now spoken of, I suppose, than I have.
-/Vie Court: There is a mode prescribed by law for ob¬
taining ovidcnco of this character. It is within tho provinco
o t io witness, on the advice of counsel, to say whether
that method will bo resorted to.
Q. Wo will pass from that now. Have you over, in any 75-
writing, labored to provo that doublo transmission on ono
iviro is tho fastest system of tolegraphy known ?
(Objected , to as being ontiroly immaterial to any issuo in
tho case, and not cross-examination upon anything that has
been brought out on the direct examination.)
Ur, Lowrey : If tho intention is to adduce ovideneo as to
the meaning of tho word " fast,” our friends promiso not to
givo any ovidonco on that subject, nnd they did not give any 75i}
except what they could not help. If this witness bad boon
examined upon any subject cognate to this, still your H°n°r
lias held us to such ovidcnco in rolation to the word 11 fast
as tended to show what nnrrington meant wlion lie used
tho word.
Ur, Sutler: Iliad supposed that I had an opportunity to
put in evidence on cross-examination when I had a porson
on the stand who knows.
Jfr. Lowrey : Wo liavo no objection to any elucidation of 764
tho term 11 fast " which doc3 not involve us in the necessity
of any robuttnl. If Gen. Butlorchoosos to make Mr. Orton
or any other witness his own witness for tho purposo of ex¬
amining him on a now subject, wo do not object.
The Court: Suppose Mr. Orton has endeavored to prove
that ono tiling is faster than another, wlmt has that to do
with tho caso?
General Butler : Thnt puts mo to tho nrgumont of the 755
caso a little early. Mr. Orton is put on tho stand for
itlio purposo of allowing thnt ho desired to buy a cer¬
tain thing, and that certain thing was an invention for tuo
transmission of messages, which, ho claims, are very vn •
uablc. Now, suppose that I can show that lie had declared
that ho had a better method— a faster method— one which
answered every purpose — may not tho fact be used in argu-
meet to show that bo was not making this bargain. 0
191
756 deny tlio bargain made. Supposo wo can show that lie mil |
at a certain time, "This is tlio fastest system possible; il
supplies all onr wants, all we desire, and we own tint," J
won’t it bear upon tlio question legitimately whether it ill
true that bo wns buying something olso?
The Court: Ho might have roasons for buying
telegraph other than the celerity of transmission of message I
by that process. Ho has not argued that tbnt was the sole |
and only roason of that purohase.
767 Mr. Suiter: I intond to tako one at a time.
Mr. Louirey : After tko explanation of counsel wo with- j
draw the objection.
Q. I ask you whether in 1878, as late as the very last I
portion of that yonr, you did not write and say both that
the duplex used by the Western Union Compauy was the
fastest system known, and entirely satisfactory?
A. I can’t remember what I ever wrote and said unless
ygg it is presented to me.
Q. You don't quito mean that, do you 7
A. I cannot remember what I wrote or said at any par¬
ticular timo on that subject
Q. Let mo give you this pamphlet and bcc if you wDI
agreo that this is it. It is a lettor to the Postmaster-Gene¬
ral, pages 19 and 21, of a pamphlet entitled “A letter to
the Postmaster General," referring to exhibit Z 6.
A. I wrote that, sir.
Q. Beginning at the top of the page, "Double transmit-
q sion on one wire, tko fastest system known ?”
A. I don’t remombor whether I wrote all these sectional
headings or not.
Q. “Duplex apparatus," and so forth. I won’t read it
all now, but I will put it all in.
(Counsel offers the letter Exhibit Z 6 in evidence. Ad¬
mitted without objection.)
Q. Look at that botweon tho brackets and see whether 760
you adopt that language ns your own, commencing about a
quarter down the pago, at “but tho automatic is not the
most economical," and going down to “ telegraphic work,”
i pago 86.
A. That expressed my opinion at the timo ; I have had
no occasion to chango it since.
Q. I want to fix, if I can, when Edison cnllcd on you to
borrow some money. You got homo in May, 1871, on tho
21th ; came to your office on tho 26th, and left on the 7th
of July. 761
A. I left on the 18th or 19th of June.
Q. And returned on tho 7th of July 7
A. Yes, sir.
Q. And you had been sick beforo you wont abroad. Then
I understand -that on account of your absence and sickness
you personally knew nothing of what was going on at the
company's works from the time you were taken sick— about
a fortnight or three weeks — then you left and went directly
to tho steamer. Then you got back on tho 26th of May,
and then you know what you did know until the 19th
of Juno, and then nothing more personally until the 7th of
July.
A. From tho 19th of Juno until the 7th of July, I pro*
sumo I was in daily communication, by wire, with my
office.
Q. You didn’t know anything oxcopt by wiro— nothing
by word of mouth?
Q. Do 'you remember any message from Edison, or about
Edison, between the 19th of Juno and the 7th of July 7 <0iS
A. I dou’t romember whether I had a message from
Edison, that is over his signature. or not; I did have mes¬
sages about Edison.
Q. From whom 7
A. From Mr. Prescott for one; possibly, I might have
had it from Mr. Mumford ; it is rather to the substanoo than
to tho persons that my recollection runB.
Q. Can you tell what there was in those messages 7
A. I can tell you. what thoy were about— that is, what
!4 some of them were nhoul ; they wero about Edison’amoncj
matters; about his mortgngo to Unger, and tbo necessity
for paying it off, and about his overtures to us to take tig
mortgage and advance the money ; those wero the subjects
of telegraphic correspondence.
Q. How soon after the 19th of June did they commence?
A. My impression is, that they comtnonccd before I went
away ; that is to say, that something was said on the sub¬
ject.
Q. By whom ?
15 A. I think by both Edison and Prescott. It is my im¬
pression also, that he had made the arrangement with Gen¬
eral lefferts beforo I went away.
Q. Then that could not bavo been beforo the 26th of ;
May?
A. No, sir.
Q. Sometime between tho 20th or May and the 19th oi
Juno Mr. Edison had called upon you about borrowing
money ?
A. I am not clear whether Mr. Edison opened that sub-
6 jcot t0 mo during that timo or had conversations with me, or
whether I had tho knowledge from Mr. Prescott or from
somebody else in Ed ison’s behalf.
Q. Was that tho occasion when the $3,000 was paid?
A. Tho $3,000 was actually paid on the 80th of June
That was during my absence ; whether 1 authorized that
payment, I do not now remember.
Q. Was that a borrowing of money or an attempt to get
the Gold and Stock Telegraph Company to pay something
on account to tho Western Union Company?
17 ■ -f* '-The actual purpose of it was to accommodate Mr.
Edison in the first instance, leaving tho adjustment of tho
matter open for tho future.
Q. If I understand you, I don’t know that I do exactly,
Edison drew a draft?
A. No, sir; Tho Gold and Stock Company drew a draft
on tho treasurer of tho Western Union Company in favor
of T. A. Edison for $3,000, which was paid.
Q. That transaction was this on tho faco of it: tbo Gold
and Stock Company, wanting to let Edison bavo some d
193
money, and i.ot having it convenient for some reason, drew 7f
a draft on tho Western Union Company, whioli tho Westorn
Union Company accepted and paid, that appeared on tho •
face of tho paper.
A. Yes, sir, so far as tho records would go, it would ap¬
pear to bo a loan for tho timo being from tho Western
Union to the Gold and Stock Company.
Q. And it would nppoar to bo a loan to tho Gold
and Stock Company for tbo purpose of paying a draft
which tlioy owed Edison ?
A. They didn’t owo Edison; that, is my understanding, f
It was for the purposo of enabling them to ndvunco Edison
$3,000, because it lind bceu tbo practice of the Gold and
Stock Company to bo in advanco of Edison all tho timo.
Q. That you kuow all about?
A. Yes, sir.
Q. Then this amount was afterwards paid tho Westorn
Union Company by the Gold and Stock Company?
A. Yes, sir. ..
Q. And charged to Edison?
A. Yes, sir ; by the Gold and Stock Company. g
Q. That had nothing to do with these inventions?
A. Whatever it had to do with them, tho facts are as
stated.
Q. What had that to do with ;theso inventions, if any-
oupation to these inventions at that time.
Q. - When did the $10,000 matter coroo up-whilo you
wore away — because lie was not going to mortgage Any¬
thing for this $3,000 cheek of tho Gold and Stock Com¬
pany? : 81
A. No, sir, no mortgngo for that.
Q, You say you had telographio communication about
his wanting a chattel mortgngo of $10,000?
A. I had telegraphic communication about his wnnting .
to raise $10,000 to enablo him to pay off a chattel mortgngo
on his shop and fixtures. v ■
Q. Ho wanted to givo you a security of a chattel mort¬
gage on tho same stock?
194
' 105
J02 A. Yes, sir.
Q. And thnt must have been while you wero absent that '
that applientiou was made. Was not thntnpplioation made ’
before you went nway — I mean of Edison ?
• A. I cannot romember whether Mr. Edison said it to me,
but I had information from sourco thnt Edison wanted
money. jj
Q. I only wnnt to donl with Edison. Didn’t Edison como
to you and ask you to loan him $10,000, and you asked him
what security ho had to give, and ho snid I linvc a stock
03 and fixtures over in Newark upon which I can give you
seourity?
A. The circumstances did not occur in Hint form or in • a
thnt order. ■
Q. Was not thnt oxnctly it? 9
A. No, sir. ' 0
Q. Now, thou, did you not say to Edison, “ I don’tcare to . 9
have a chattel mortgage," or words to thnt effect, “about I
wlmt I don’t know exactly. What else have you got for 9
security ?" la
)4 A. Thnt X did say, in substance. That substantially pas- jj
sed between Edison and myself on this day. I
Q. Did not he say, "I hnvo my interest in automatic; I 9
will give you that for security?” ■ I
A. Something to thnt effect. fj
Q. Well, thnt in substance? jj
A. Thnt in substance, and I hnvo not got anything but H
my automatic. • fj
Q- Did you not say, " What is your intorost in the auto- |
5 A. No, sir. I
Q. Did ho not toll you what his interest in antomatio . 9
was? I
A. Shall I toll you what I did say to him ? 1 1|
Q. No, sir. If you didn’t say that, I don’t care what else : |
you said. You didn't say that? 9
Q. Did ho not say, “I haven contract with -Mr. Har- 80
1 A Ho didn’t say anything of the sort. I said that I
would not give $10,000 for all the traps, but it might bo
good security for $10,000, nevertheless.
Q. All right, wo won’t argue it now. Did you say to linn
^'a! That is oxnctly what I said to him; that I would not
give $10,000 for all those traps, but nevertheless it might
bo good security for $10,000.
Q. I menu his automatic 1
A. That is oxnctly wliat I refor to. , 81
Q. leave out tho chattel mortgage. I moan his iutoicst
in the automatic ! .
A. Yes, sir, thnt is exactly what I refer to.
Q. Yon said you would not givo $10,000 for all his tops,
referring to Ids iutorest in the automatic, aiiendul not
Mr. Edison say to you, “I have got a “ntrac witU Mr.
Harrington.” You say no. Then, did you not toll him,
“Well, let us see it 1” g
A. Nci, sir.
Q. “ Bring it hero to-morrow morning 1”
A. I can tell you exactly what Edison saul; it conics to
my mind now.
Q. Did ho say that!
A. No, sir.
Q. Ho didn’t!
Q.’ Dili not Mr. Edison como and bring his contracts be-
ween him and Mr. Harrington to you!
A. Not to my recollection.
Q. Can you tell wliothcr ho did or not ? 6
A. I have no recollection of Edison showing mo any con-
triQ.t Did yon not look at it and toll him to go and show it
to your lawyers, Messrs. Porter, Lowroy, Soreu and Stono,
mid soud Mr. Prescott with him ? .
A. I lmvo no recollection that I sent anybody, or co
suited Porter, lowroy, Boren and Stono on that omiasion.
Q. Have you such inomory on this subject that you can
tell whether you did not ?
A. I don’t remember that I did.
810 Q. Do you romoinbor tlio transaction so tliat you kmw
you did not ?
A. I don’t think I do.
Q. Do you know tliat you do notT
A. I liavo answered tho quostion ns fully ns I cnn.
Q. Pardon mo. Thoro are somo tilings a man knows lie
did do, and somo things ho knows ho did not. I want to
know whethor that is ono of tho things you know you did
do?
A. I don’t think I do.
Q. Did you over seo a contract botwoon Edison and Hnr-
811 rington ?
A. Yes, sir.
Q. 'When, for tho first time ?
A. To tho host of my recollection, it was in January.
1875. •”
Q. Did you not soo a contract earlier tlinn that 1
A. I don’t remember.
Q. Dave you such memory that yon cnn say you didn’t!
A. I don’t think I want to vary tho form of tho nnswor I
hnvo givon. I do not recollect of having seen a contract of
that kind.
812 Q. Did you over liavo a conversation with Mr. Edison ns
to whether qundruplex or duplex was within a contract
which, you saw 1
(Objected to. Admitted.)
. A. I had a conversation with Edison, not, as I remember
about a contract. I
Q. Pardon mo. Thou I don’t want anything about it.
The Court : I think wlion Gouoral Bntlor asks whothor
tho witness had such a conversation or not, ho is entitled to
nil answer.
Q. Do you now know that you did not hnvo a conversa¬
tion with Mr. Edison as to whothor tho qundruplox, or du-
Edison in connection with a contraot about qundruplox anil
duplex. I do recollect a conversation with Mr. Edison
about qundruplox and duplex uiulor tlieso oircuinstnnoos.
Q. That I don’t want.
Mr. Tmoretj ; I think tho witness ought to liavo a clinnco
to oxplnin liimsolf.
Tho Court : I am inclined to think that tho bettor plan
would bo, that if any testimony is givon that tends to show
that ho has mailo statements out of court inconsistent with
thoso mail o hero, ho may bo recalled horoaftor. It maybe,
howovor, wholly unnecessary if no issue is raised in regard
to this point.
Mr. Butler : I think I liavo tho right to ask tho witnos?
for a given conversation. If ho had not had that, then I
do not liavo any conversation in. If ho has had tl.mty .1
want that in.
The Court ; I think it will bo wholly unnecessary that
any explanation shall bo givon, unless it shall appear that
the witness is mistaken, or that thoro is a conflict m rela¬
tion to that point.
ThoWitimai Iliad a conversation with Mr. Edison on
tho 8th of July. , , r
Q. I don’t ask you that. You liavo had mnny. I ask
yon now, sir, whothor, prior to tho 10th day1 of Jnly-nnd 1
h take that dato bocauso I can fix it by a certain limes ar¬
ticle— you did not liavo a conversation with Mr. Ellison
asking him, in snbstauco, whothor tho qundruplox or du¬
plex wore within his contract with Mr. Harrington ?
A. I don’t think I ovor had such conversation.
Q. Do you know you novor had?
I A. I don’t think I ovor had such conversation.
Q. Havo you said you had ? , . .
A. Ho, sir, not that I know of. I don’t remember that 1
ovor had such conversation.
Q. Is your memory so accurate that it will toll y°ajrho
103
I don’t romombor nny anon conversation.
. Q. Was it dismissed between you and Mr
yonr recollootion, tliat there was any contract b
and Harrington about nny tolcgrnphic inrontio
A. I have had conversations with Mr. Edison
Q. I mean prior to July 10th ?
A. I think not.
Q. Are you suro about that?
A. I fed very suro about that. I have no roc
any such conversation with Edison prior to that
81 J conversation I rot'orred to a moment ago was sit
that time.
Q. Did you not instruct your counsol, Mm
Lowroy, Soron and Stono, that you lmd Imd sue
sntiou, and tell them what was said ill it?
A. r don’t remember that I over gavo them si
tion.
Q. Did you not instruct thorn beforo nny ng
sale was mndo that you lmd such a convorsntio
son told you that quadruples and duplex wen
log nnrrington agreement!
A. No, sir.
Q. When was tho first time that you havo t
branco of having bail any conversation with
upon that question 1
A. Somctinio in tho autumn of 1874.
Q. What time 1
A. Well, I don’t romombor what time.
Q. As near ns you can 1
A. September or October, perhaps I should ft
hail a conversation witli Edison.
§21 Q- In September or Ootober 1
A. I think so.
Q. Now, then, having that conversation, wlioi
Q. Won’t yon tax your memory to recall nny other 1 gl
A. I will. -
Q. Do you now recall any other!
A. I do liot.
Q. Who introduced that conversation!
A. I think X did.
Q. Was it a long conversation !
A. I don’t romombor as to that; probably not.
Q. Do you romombor as to its length; whether it was
lengthy !
A. I do not.
Q. That conversation which you fix in Soptomber or
.October; can you tlx it any nearer! g
A. No, sir; I mn not able to.
Q. atato to mo tho first word that you can remember
that you said to Mr. Edison at that time !
I A. At tho commencement of tho interviow !
Q. In that interviow of Septenibor or October, which my
ast question involved, after having taxed your rccollcc-
I A. I don’t romombor what tho first word or sentoneowns.
1 Q. Givo mo tho first sentence that you do romombor !
A. Tho siibstnnco of tho first that I do roinomber that I
aid to him was, that I had heard recently that Mr. Reiff g
mil stated in conversation that it was not fair, or in Bomo
omplniniiig way, that Mr. Edisou should bo helping tho
I A'csteru Union Co., and Sir. Edison veplied in siibstnnco
Mint there was no ground for any such complaint, and ho
•nvo two ronsous — I don’t know that ho said for two
asoiis, but he gave two reasons; one was that Mr. Keiff
■ that party had no claim upon him for anything except
itomntic; and in tho next place, that tho arrangement
int had been mndo that covered that hail already fallen
rough ; that is tho siibstnnco of it.
Q. Anything olso that yon con remember at that time ! g
'A. Nothing that I can romombor.
Q. Arc you sure that tho wonl was « arrangement !”
A. I am not suro of nny particular word, I was endeavor¬
ing to givo tho'substanco of his conversation.
Q. Was it not “contract!”
A. I don’t romomber; it might havo boon, sir. ... -
Q. Did yon ask him what that, as arrangement or con-
Ltraot— was !
828 . A. I don’t remember font I did.
1 Q. Did you mako any inquiry furtlior 1
A. I don’t remombor that I did.
Q. Did you lmvo any other conversation with him ntai
other time heforo the 23d of January, upon this sumo mi
A. Do you mean about the quadruplox and duplex)
Q. About tlmt contract or urraugcincnt f
A. I linvo no recollection.
Q. Will you tax your recollection and sco)
A. I have tried to do it already; I do not.
827 Q. You have road tho testimony of Mr. Edison, on tt
■ point 1
Q. How, sir, aftor you had returned from Chicago, d
you not instruct your counsel, Messrs. Porter, I.own
Soreu and Stone, to inform Mr. Edison, that whilo you It
been told of tho contract, you supposed you lmd also he
told that tho quadruplox and duplex did not como with
it)
A. I have no recollection of any such instructions or co
versation with my counsel on that subject.
328 Q. Did you turn tho letter of Mr. Edison, of tho 26th
■ , January, which is an exhibit in this enso, over to them, a:
instruct them to make an answer to it )
[Referring to Exhibit X.J
A. Lot mo seo tho exhibit.
|Exhibit handed to witness.]
329 Q. You received that lottor from Mr. Edison )
A. I think I did.
id: Q- hid you not turn that over to Messrs. Porter, Lowrc
Boron and Stone to answer )
A. I think I turned it over to them.
Q.' Aiid with directions to make an answer)
The witness. [Continuing his last answers.] Hot bccau
I remember tho fact; I reached that result by reasoning
lon’t remember that you turned it over)
icmbor ; no, sir.
alto any nnswor to it yourself?
lombor that.
remember whether you gave them insti
ject?
ision is that I did not instruct in respect
Wo advised together about them,
acted them on matters of fact within y
om whatever information X possessed,
;avo it of course, ns it lay in your mind
lumber that lie had.
meeting with Mr. Rci(f, which you have
lot go into some investigation to seo wl
icso parties were )
•ally, do you mean to say that you had
ou in your miml. or lulormation or bol
any written contract butweeu Edison a
il January, 1S75 ?
norally, from information that floats ab
:od up that I cannot trace definitely a
;1 nmdo improvements on tho automatic,
sk you about improvements, I ask
d not know or linvo information that Edi
er some contract botweeu him and Harr
ink I know what wns tho character of
it what I ask you. Did you not knoi
o boliovo, or linvo information that ho
imo kind of written contract, whatever 1
•member that I had any such knowledge
834 Q. Or information ?
A. Or information.
Q. Orbolicf?
A. Or belief.
Q. Ami do you now tell tbo Court tlmt
this transaction of so much importance, tli
inquiry 1
A. I have no recollection of having made
the subject; I can recall nothing that warm
was any necessity for any investigation of
Aq. Did you have no conversation with
335 /that subject?
/ ' A. I have had a great many converse
/ Prescott, but I cun recall nothing on that s
/ Q. Nothing on thnt subject whatever?
I r A. If Hr. Prescott should say thnt ho ha
-I sation with mo on thnt subject that ho n
tinetly, I should not bo inclined to disputo
Q. Let us try that with Air. Edison. St
son should say distinctly that ho had had
with you on tho subject, would you put h
category with Hr. Prescott?
330 -A. Perhaps Hr. Edison would have si
upon his mind in relation to such a con
would recall it to my mind ; I simply do no
Q. Do you maUo tho same qualilleatioi
Hr. Prescott?
A. Yes, sir.
Q. Then Hr. Edison or Mr. Prescott, in
i of your ailiiirs, would bo more likely to
l you ; thoroforo you yield to their memory
\ tho state of your mind ?
337 A. I don’t know what I should do unt
\ should arise; I don’t think that either of
\innny tilings to disturb their memory ns I li
(Objected to and withdrawn.)
Q. You know tlioro was soino sort of
d you not, existing between Ilnrringt
?;ij in regard to inventions and imp
•apliy ?
A. I know thnt Edison had boon ongti
as then engaged, in making nppnrntiu
r the use of tho automatic people; bill
ilntlou to the automatic concern or Mr.
m’t think I know.
Q, i [suppose tho duplex transmitter
logmphy, is it not?
A. 1 don’t know any such thing ns a
•you mean duplex transmission -
Q. Do not let you anil I fence.
A. I don’t mean to fouco.
0. Take a duplex maohino. It is a m
•LUU anew 110 was W innKo Ins duplex bj
)ii over in his shop, in Newark 1
Jrakinjf the duplex did not consist in mat
s. It was in tlio exploitation of nn idea.
Hut tlio machine by which the idea was ti
nis to bo made in his shop, in Newark 1
I think not.
Was a single mnohino for the llrst tlirei
u’s perlbriiinnce in your service, niado in j
I don’t remember as to that
Wlion he said lie could uinko duplex by
m think lie referred to tlio process by the
I did undoubtedly.
Wd you over know a process to bo inensi
tf ho could make so ninny different coml
'i us ns to produce such a number, ho
uy saying a bushel.
Edison treated the duple
inly olio great telegraph!
:omntic, and that the idea
for so trivial an iitlair m
invo entered iuto their mi
Q. ITo simply treated tl
include in the duplex systi
matter of joke— the Steal
A. Ho did seem to tre
t flair, compared with aut<
Q. That is, the Stearns
would bo a trivial affair
of transmission 1
A. I don’t think wo d
tints bs on. but its vnlu
Hearing Eesumed.
Q. Supposo you know the mnn was still
imubody olao, amt lii.s timo probably paid
oily olso, ami ho was working in another i
mice thoso baskets, would it not rniso a i
liiul whether he lmd any right to work for yt
A. I didn’t know whether lie was workin
nil’s shop. It was my impression that the a
msiderod a perfected and completed thing.
Q. You, then, believed that the automatic
me, 187.'!, an entirely perfected and complete
A. Well, from tho manner it was troated I
:ctcd witli it.
Q. And you considered that at tho timo in
irgnin with him !
A. I don’t think I did; I don’t think I toi
unt at nil.
CJ. What was tho reason that you did not it
A. because tlioro was not any reason why I
[J. And because tlioro was no reason why yo
In’t; and you kept in that condition of mind
I you!
A. My recollection is not vorv dist.limt in
itlnnntion of tho cross examination of Mr. Orl
Butler:
ore commencing proceedings Sir. Wheeler state
, ended complaint had been served on the rteren
l ore at liberty either to answer it, or to lot the f
under the order previously made.
. Dieter, on stated that tho plaintiff admitted tl
Is in the cases lettered A to II inclusive, wero
stout Onico on tho 20th of April, 1S73.
. lowrcy stated that the plaintiff admitted th
■moot of August lath, 1874, between 1 rcscol
m, was recorded in the Patent Offlco on tho -
ment by the Witness:
your Honor please, I was asked soverat qncstlo
y which 1 was unable at tho time to nnswei, a
Inch I promised to answer this morning, rmd
mornndum requesting mo to produco telegiams
350 book or books of nccoimt of tlio factory and si
nm now prepared to say that not only will I i>
books, bat a witness who kept the books, at
tune. 1 was inquired of concerning ti letter of Mr,
myself, I do not liml upon the flics of the eon
letter -
Q. Not to yourself but to Mr. Miller »
A. I do not find on tlio files of the company
from Mr Murray to anybody. I was also inquit
corning the instructions given to the counsel of tb
m respect to a reply to be iiuido to a letter from Jl
00 dated January »0th, 1875, and received, I think,
ol l-ebruary, 1875. lbnve since obtained a c,
letter that counsel wrote on that o( cnsion That
Q. Have yon bad an examination made of I
papers of die Western Union Telegraph Co. as i
documents, memoranda, either signed by Edisoi
handwriting, which liavo been received by you oi
or any ofllcer of theirs 1
A. I have.
Q- Careful and exact ns you can.
A. Intended to bo most careful and thorough.
31 v„t rcs"lfc of l,1“t search tlio product
°r tlle character wl II l
■A. 1 think so.
Q- Is there any other which has not been prodi
mnni-H t,"'1 t0 answer tliat question; all
tun,0‘* over t0 the counsel of the con
11,1 1,8 I nm aware.
Q. Won’t you know whether they have all been
or not i You have seen the exhibits, have you !
m volitions lor tno Uoid and Stock Co.
cm Union Co., per tc t
1(1 y011 i I might Imvo Imd convcrsntions
ill such conversations,
iliibits which I now Imnd yon, beginning
low soon alter yon got Exhibit 8, wind
(ly to treat for the duplex, etc.,” or ho*
to of it, did you got it ?
•lint f
id this letter T
linudcd it to Mr. Miller on that date; that
coollcction.
fter did yon seo Mr. Edison !
(in a day or two, or tlirce.
d Mr. Miller that you were ready to treat
ind to consider his other propositions:
itions had Edison made to you then ?
>y memory what they were?
lon’t romcinbcr what that phraso refers
. is directed to Mr. Miller f
t canto from Mr. Edison ; I think the orig
is handwriting.
lioro it enmo from here ; how did it gc
nr counsol put it into tlio caso.
got into tho hands of counsel ?
irstniul you.
ant to know is, how camo it into youi
■oil seo that?
iiuber whether X saw it before Mr. Edison
or after lie had sailed, but somowhore
at Edisou went away,
omember that it was shown to yon after
itiou is not distinct on that point.
' . ot Edison's doings lio
ioio bo sailed: Please inform Mr. Orton that I have
.Z’rli’ t f ,1",n!'Sl'eurt t0 with one exception, and nm
low iudj to exhibit and oloso tbo tiling up,” and so oai
, o abon" tlm"0 b0' ' ^ ' J ' 'lro,i 10 1 woro at thc
lB somiinl10'1 1,0 about working played-out wires, and
wl v „S °m8 t0,Su™"' Di<1 !t »««">• to jmn i l
raM stw dorVv1 "’llilil1 Wils ,lot to Sor-
A. Ifo «h f l° 5r“'111 & 00‘’ Wll°r° nU tl10 lU‘l,lox "'cut ?
oSbSv^h11* H°' °"’pln'Vod by tlm Wostorn Union
7!S 18 tbeir patont lawyers at tlmt ti.no I
A. Aot to my knowledge.
Q- no yon know whether tiioy woro or not?
,,ot 1 rt0,1’t think they wero
7 o X n,° , 'V ll0'Vc8t0I'“ Union Company.
7 A III ill 1 Tr T a'Ta,|gement bo sent to thorn.
a. Ho sent to iMr. Sorrell.
n.® mi'a'1'0 8Ilu:lk8 nb0l't working long circuits and so
no nunt to Europe, as yon have testified
any interview witli Edison 1
l. 1 think I lmd.
1. Do yon know yon had ?
.. I make my answer in wlmt seems to i
».V decorous manner. I think I bad snob an
icdintcly after this.
!• 1 want to got yonr positiveness 1
That is as positive ns I dnro to stnto it.
. Did you not know tlmt Mr. Edison tried to
i with you between tlioso tv o tu it i and conic
iforo loft tbo power of attorney 1
. I did not know anything of the kind.
. How soon after this letter of April 4th, did
Interview with Mr. Edison ?
110,1 me. Umbis another question. I do notask
mombur wlmt was tho said first ia a conversation,
i to give tho first thing you romombor was said, if
labor anything ?
rar as tho language is concerned I do not rornern-
ling that was said by oitlior party. I romombor
inioo ol what I said at tho conclusion of tho ox*
you romombor anything tlint lie said or tho sub.
anytliing ho said 1
sir.
at tho conclusion of tho experiments, tho only
romombor is tho substance of what you said,
ito it 1
is that instead of expending time to devise pro-
working played-out wires, I thought it would bo
nnko the wire so that they would not need any
Tho Witness : j do not unden
The Court: X want to know
nnd wlmt pnton e o
A. I don’t romombor wlmt pr
■working these long circuits, noi
over took tho shape of patents, i
Q. Ho says hero, “ 1 do not tl
of any practical value so far. 1)
to refer to tho devices for workii
A. Yes, sir.
Q. “ I shall not givo it up i»
rangomenti
A. Yes, sir.
Q. “ Tho patents will bo aliowi
how did you understand that f
;iint. “ Tlie patents will be allow,
oforred to tho pntonts which ho
' . . . ‘"'"i » uihik ho unu anytl
'*• 110 «»ys, “ Ho may sell all my right, til
every conceivable description iu tho eight tin
etc.” That is what ho had to soil.
A. Mr. Miller did not ofl'or mo these patcnl
to pay him for thorn.
Q. You seo ho lmd something to soil f
A. I seo what is in tho paper.
Q. You did not mako that objection to buyii
A. Ho offered mo nothing to sell.
Q. There was no disputo between you ?
A. Two moil who did not want to trndo u
likely to lmvo a disputo.
Q. I want your careful attention to this: fi
yon saw this letter of nttornoy, of tho 23rd of
down to the lUtli day of May, 1871, did you eve
of writing signed or written by T. A. Edison i
A. 1 don’t remember that I did.
Q. Have you any remoinbnmco of any' oecnsi
any writing was shown to you between those d
A. I don’t recall anything of tho kind.
Q. Hnvo you over, in that search, been ablo
scrap of writing, after Edison told you ho had
until ho offered to make liis bnrgin with l’resco
A. I have liovor made any search for tho
nsccrtnininc: it.
ing that period. °"'8 with Mr. Edison i
Q- I now speak of writing 1
A. 1 don’t remember.
hte iiidsheil JT ?,0",0,'y f",ly> 80 tl,at *» «■
Alb’ 'T1 "0t 00,1,0 back "gain niter rcccs
■ * iKEES? 1 '“•* -
Q- Of any description i
at,?f ™'t,0SI 5 1 <l0lrt romomt)er that any pnpc
M, 18JJ, II,, »,.t a,
* , U,U tlmt y°" “■* Mr. Edison, or Mr. Edison nn
Q. I cannot make the statements.
A Yes' gir S0"10 tilUU 'Vll0,‘ 1,0 s‘w y0K ?
sr,ix“^r “ *■
Q. You saw him in Court liore, did you not 1
A. I was referring to tho occasion of tho first timo
him.
Q. Thoro is somo timo whan you enu remember am
I romombor scciug Edison ?
A. Do you menu fix a dato ?
Q. Yes, sir; you can remember when you saw him
oveningwhon that Times artielo was written; I wil
you whether you saw him then !
A. I" connection with the writing of tho Times artii
Q. Did you see him at tho time it was written ?
A. I did not write tho article, and I do not know ’
it was written.
Q. You do not ?
A. No, sir.
Q. You have testified you saw him ou tho 7th or 81
July, 1871?
A. Yos, sir; I did.
Q. Is thoro any day beforo that date whou you can
[ know I saw Edison on that certain day 1
A. I cannot now recall a day.
Q. Can you give mo within a month any timo when
am say, I know I saw Edison in tho mouth of May, or
nonth of Juno, 1873, or tho month of July, 1S73 ?
JV. oiiimng on your assumption; assuming that 1
turned in Juno, I sliould then say that I saw him will
11101,1,1 ot’ N'nt time, anil had a conversation with him.
007 Q- Suppose it was in the month of May. then you
him when ?
A. In tho month of Jane ; I should say it was wit
month after his return.
Q. Will you state this : did you lmvo any convors
with him within a month nl'tor ho roturned from Em
whenever that dato was ?
A. Yes, sir; I will.
Q. Whore was it?
A. In my ofllco.
m Q- Did ho call on you ?
A. I won’t say ho called on mo, but ho was in tho b
m g and we mot.
Q. I ihid Mr. Edison tustilles that ho hadn’t nnvthin
do with your wires after April, 1873, until tl.o mold
tho summer of 1874. (quotiiifrlio.il pane 205 ol I di
testimony.) If I understand this, it is, tlmt while Mr.
or might have boon asking for things, Edison denies
ho was there from the time lie got hack from Europe, i
t <-\| e o ts ii 1 1 s o t j in tl.e summer of ]
alter tills next letter to which I will call your attention
[Exhibit 14) ?
A. I lmvo it, sir.
Q. That you say was brought to yc
20th 1
A. I don’t think I said so.
Q. I understood you so.
A. I don’t think I said so.
Q. You got homo on tho 24th 1
A. Yes, sir.
Q. You got to tho ofllco on tho 20th 1
A. Which was Tuesday ; I think I sai
no soon after.
Q. How long nftor ?
A. I lmvo no recollection ns to tho da;
hat it was soon after my roturn — wi
lays.
Q. Then you took it homo and took il
ion a day or two ?
A. I don’t know that I did a day or t\i
I'ith tho papers that I was constrained
ink of time to consider ut my desk.
Q. I want to ask you whether your i
xpeutod ono, or ono that was known at
A. My roturn from Europo !
Q. Yes, sir.
A. So far as tho fact of my being on tl
erned, that was known ; and I was met
ml other trontlomon connected with tho
Q. Ho says, facilities anil personal help to t
to invent them.
A. As a matter of fact, tho test was nu
ivircs.
Q. You ivcro present when they were inado
A. No, sir j not often. Your question invo
jf fact, in which tliero was an error. It is only
A. 1 thought you were asking my construction, not n:
knowledge ; of course, I don’t know what lie wanted.
Q. is there anything clso in this tlmt shows lie wautc
anything besides wires to test these 1
A. Intelligent help was quite us essential ns wires.
Q. You mean operators ?
A. Tho licit* of intelligent men.
Q. Meaning operators.
A. Not necessarily operating mon, but scieutilio Indi¬
an electrician.
Q. lie wanted tho help of an electrician 1
A. Possibly ho had applied for one.
Q. lie was in charge of this matter ?
A. What matter.
Q. Of these inventions?
A. That is my impression.
Q. lie applied to a man in tho character of a superintend
lit, who happened to bo an electrician ?
A. Mr. Prescott was not ft superintendent.
Q. Do you understand that Mr. Prescott lias acceded t<
his proposition and agreed to it ?
A. When ho handed this paper to me.
Q. Yes, sir?
A. No, sir.
Q. Did you understand that lie hadn’t ?
A. I did understand that ho hadn’t.
Q. You instructed him to not neoedo to it, ns Mr. Edison
as trieky, until after a woll prepared partnership agree.
>cnt was made?
A. If you will sepaiato your question, I will answer them
Q. Advice then 1
A. Nor did I sny anything tlint implied that, in my opin¬
ion, that Mr. Edison was tricky.
Q. You had been informed tlint ho was tricky?
A. I stilted to you tlint I had boon so informed: somo
charge of that kind had boon mndo.
Q. Yon repeated it for the guidance of your people?
A. I also stated that I did not boliovo it; I certainly diil
not act upon it in my intercourse with Mr. Edison for a
period of two years.
Q. On account of your information, that lie had been
tricky, you thought ho had better Imvo a carefully pre¬
pared partnership agreement drawn before ho did anything
■with him.
The Court .• Was the word irichj used ?
Q. I desire now to ask you if you did not state to him
that on account of the unreliability ; I am not dealing with
words, but with thought and substance— or on some nc-
count which you stated to your subordinate, it was best
that ho should havo nothing to do with Edison until a care-
tully prepnred partnership agreement was drawn V
A. I certainly did not say anything to him in that form,
or that convoys that idea; if you will allow me -
Q. As wo havo not the copy hero, I will take your state¬
ment of wlmt yon said to Mr. Prescott, after you brought
Jack the paper to him?
A. 'When I wns examined on tlint point I did not recall
this remark ofmino to Mr. Pacscott, but I wns pressed very
much by counsel to remember everything that pnssed bo-
ween Mr. Prescott and mvsntr „„ . . . ,1
8 should have a carefully prepared contract; did you no
B use tlioso very words ?
A. Perhups I did.
Q. Did you not i
A. I don’t remember what I said the other day ns to nl!
the words. I did remembor that I did not use thoworil
" trioky,” because tlint was not the idea in my miud.
Q. Unreliable 1
A. Unreliable.
Q. Unreliable pecuniarily ?
A. I don’t know that ho is unreliable pecuniarily. I do
not sny tlint ho is unreliable in nay aspect.
Q. Did you not tell him, until that was done ho had hot¬
ter not havo anything to do with him ?
A. I did not.
Q. What is the next you said J
A. I don’t remember.
Q. Try and remembor anything that you did say 1
A. I stated all that I could remember the other day.
Q- Pardon me ; stato it again ?
A. I gave my assent. Mr. Prescott had asked nip
whon ho gave mo this paper,' my opinion ns to tlio pro¬
priety of his accepting this proposition. '
Q. Did you givo your assent that ho should do it until ho
got that carefully-prepared agreement ?
A.- There wns no conditions whatever in my nnswor to
Prescott. I handed him tlio paper, anil said I saw no rea¬
son why lie should not accept it. There were no condi¬
tions attached to it. Incidentally, I suggested to him that
lie had better havo a contract drawn.
The Court: Wlmt wns said ns to the reason ?
A. It lmd been represented to me, or there had been a
rumor or a hint, or something of that kind, that Edison was
not very reliable. '
A. I didn’t do anything of tiio kind.
Q. Nothing like that in substance?
A. X gave no instructions on the subject.
Q. Advico tlien ?
A. Nor did I say anything that implied that, in my opin-
ion, that Mr. Edison was tricky.
Q. You lmd been informed that ho was tricky?
A. I stated to you tlmt I had been so informed; somo
charge of that kind lmd been made.
Q. You repeated it for tiio guidance of your people?
A. I also stated that I did not boiiovo it; I certainly did
not act upon it in my intercourse with Mr. Edison fora
period of two years.
Q. On account of your information, that ho lmd been
tricky, you thought ho lmd better have a carefully pre¬
pared partnership agreement drawn boforoho did anything
■with him.
m Court ; Was the word Moby used ?
«urrf»]Xnmilmti0" “ WnS f0"IUl tlmt 1,10 W01'(1 wns
Q. I desire now to ask you if you did not stato to him
that on account of tiio unreliability ; I am not dealing with
words, blit with thought and substnneo— or on somo ac¬
count which you stated to your subordinate, it was best
mt ho should have nothing to do with Edison until a enro-
iully prepared partnership agreement was drawn ?
A- I certainly did not say anything to him in that form,
ir that convoys that idea; if you will allow me _
Q. As wo have not the copy hero, I will take your state-
°f Wlmfc y°“ s.ai(l to Mr. Prescott, after you brought
Kick the paper to him?
A. When I was examined on that point I did not recall
his remark ol mine to Mr. Pjcscott, but I was pressed very
wee M,.CTSe‘ PC,,1*",bcl' ovcrJ'thlng that passed bo-
. rescott aud mysolf on that occasion; and |
nun, " ion lmd bettor have the contract put iu writing inn
duly executed.”
! Q. Did you not say to him hero that you thought h
should have a carefully prepared contract; did you no
nso those very words ?
A. Perhaps I did,
Q. Did you not?
A. I don’t remember wlmt I said the other day ns to al
tho words. I did romombor that I did not use the wort
“ tricky,” because that was not tho idea in my mind.
Q. Unreliable!
A. Unreliable.
Q. Unreliable pecuniarily ?
A. X don’t know that bo is unreliable pecuniarily. I d<
not say that lie is unreliable iu any aspect.
Q. Did you uot toll him, until that was dono ho had bet
tor uot have anything to do with him !
A. X did uot.
Q. What is tho next you said !
A. X don’t remember.
Q. Try and remember anything that you did say !
A. I stated all that X could remember tho other day.
Q. Pardon mo ; state it again 1
A. I gave my assent. Mr. Prescott lmd asked me
when ho gave mo this paper,' my opinion as to the pro¬
priety of his accepting this proposition. •
Q. Did you givo your assent that ho should do it until ho
got that carefully-prepared agreement ?
A.- There was no conditions whatever in my answer to
Prescott. I handed him tiio paper, and said I snw no rea¬
son why he should not accept it. There were no condi¬
tions attached to it Incidentally, I suggestod to him that
he lmd better have a contract drawn.
The Churl: Wlmt was said as to tho reason ? ■
A. It had been represented to me, or there lmd been a
rumor or a hint, or something of that kind, that Edison was
not very reliable. . „
- a Unreliable as to his contracts, as I remember it t
3 A. The evidence will sponk for itself; I don’t remember
distinctly.
Q. Do you remember now ?
A. I think I used the word " unreliable."
Q. In his contracts?
A. I don't remember ns to that.
Q. Do you now remember thnttho word "contract” was
used?
A. I do not.
Q. You don’t know whether it was or was not?
A. No, sir.
Q. Now, if you please, that caution of yours was kindly
meant to prevent hint going into operation with a mnn
thnt might bo unreliable until lie was thoroughly bound?
A. It wns kindly meant, I am sure.
Q. Dor that purpose ?
A. It was for the purposo of suggesting that he had
bettor havo this reduced to writing and oxccuted.
J ™ *ou to11 lLe Cou« that after you returned on the
b! tfpnyl,P t0J'° dnt0 "'llon Son handed this paper
— bauk t0 Prescott, Edison had made a single experiment on
your wires— that you know that lie had ?
A. I hadn’t boon in tho experimenting room to see
Q. I didn't ask you tho reason why you don’t know; I
ask you whether you know ?
A. I boliovo that 'ho lmd.
Q. Do you know that he had ?
rent 1 'To "l,Td-V Si'id 1 Waa I10t iu ‘ho experimental
room and, therefore, I had not that kind of knowledge
winch comes from personal observation.
Q. Will you say that he had told you ho did ?
A. I don t remember thnt he had told me
himyoudon?k„Powr’Ul ” i,’f°rmatioB £r0m
MrA;J. do,,’t [en;ember. Within a few days of my return
not undertake to say."10’ bUt ^ 1 d°
.lll“lt dat°, Wh0n y°u fiavo tho paper to Hr.
Prescott up .to the 10th of June, that Mr Edison was mak¬
ing experiments in your offico or over your wires, of your
own knowledge ?
[ A. I think ho was.
Q. I am asking of your own knowledge?
A. I cannot fix tho dato of tho occasion when I wns in
the experimental room with Mr. Edison on this subject;
whether it wns beforo tho 19th of Juno or after tho 8th of
July,I don’t know, but I strongly inclino to tho belief thnt
it was before, and ho was notunlly mnking tho experiments
at that timo.
Q- I am not asking what you nro inclined to bolievo, I
ask you whether you havo any knowledge or momory ?
A. I am relying on my momory, and my memory is that
he wns, but if Mr. Edison should distinctly say that ho waB
not, I should considor thnt my momory was at fault ou
thnt point.
Q. Do you romomber whether between tho 10th of Juno
and tho 8th of July you know anything of his having made
experiments of your own knowledge?
A. Yes, sir.
Q. What wns it?
A. I fix tho dato of tho 8th or 0th or 10th of July ?
Q. I say proviounly to tho 10th of July, botwoon tho 8th
of July, tho day’ before tho contract, and tho 19th of Juno,
which wns tho last rest thnt I made in roferonco to this ;
do you know thnt he did?
A. Yes, sir; I fix tho timo, not by tho matter of tho con¬
tract, because I lmvo no recollection ns to tho dato of thnt,
but by tho experiments in tho presence of a Times reporter,
which led to the publication of on nrlicle in tho Times.
Q. That was tho night of tho 9th ?
A. Tho occasion that I wns in tho experimenting room
wns not at night, but in tho nfiornoon ; and I had know¬
ledge that tho exhibition was being made to a roportor,
who was to writo an articlo ; Mrs. Edison was tlioro.
Q. Tho date is fixed as tho 0th. Between tho 19th of
Juno and thnt timo, do you remember thnt any experiments
were being mado, of your own knowledge ?
A. I was absent from Now York until tho morning of
tho 7th of July.
938 Q- You stated yesterday, without qualification, that you
know, as I find from my report, that for sovoral months
prior to the 8th of July experiments had been going on in
the Western Union Telegraph shop by Edison. Do you
know that now?
A. That is my impression ; that is my memory.
Q. Have you any other memory than what you huvo
just given me?
A. I hnvo nono but my own ; that is the best I have.
Q. Eavo you any other memory on this matter, except
939 that which you hnvo just given mo?
A. I hnvo nothing elso.
Q. Of your own knowledge will you state that you
know ns a matter of momory botwoon the 20th of May,
when you first got this, and the 7th day of July when you
returned homo, having been absent from the 19th of Juno
until that day, you know experiments wore going on on
that wire in tho Western Union odloo— your own know¬
ledge; not your belief or ideas or inclination or impression,
or what you learnod sineo ?
■ 940 A. That involves rathor n motaphysical dissection of a
man’s memory ; reason comes in to support momory ; tables,
batteries, and apparatus can hardly bo produced in a night
I returned from Chicago on the 7th of July ; X have Just
stated that I witnsssed experiments in tho experimental
room, whore thcro was an oxtonsivo equipment of apparatus
on tho 8th or 9th, in tho presanoo of a rimes’ reporter;
I boliovo that was' in operation in Juno, before I wont
away.
Q. Pardon mo ; I ask you of your own knowledge, and
941 I want your answer on your oath ?
A. I do not think that is necessary ; I am on my oath
all the tiino.
. Q. Did you know ?
A. I believe.
Q. I did not ask you that ? I
A. 1 believo that I know. j
lhc Court: Tho question toads to inquire whether you
witnessed any such experiments? ‘ ;
A. I think I did. . ■ j
Q. Have you any momory on that matter? 942
A. Woll, tho wholo of this is a matter of momory ; I
am trying my best to mako my memory reproduce the
Q. Now, do you swear that you have a memory upon
that?
A. I cannot swear that I remember positively that on
any particular day in Juno I saw theso experiments.
Q. I didn’t ask you that.
The Court: Lcavo out tho words, "on any particular 948
day," and stnto how it is?
A. To the best of my recollection I did.
Q. It may bo tho best when you Imvo not any.
A I desire to make my answers responsivo to your ques¬
tions.
Q. I put this question now distinctly so that wo shall
have nb mistake. Hnvo you any memory that any experi¬
ment was, to your knowledge, made by Thomas A. Edison
on the Wcstorn Union wire, betweon tho 26th of May and
tho 7th of July ? 944
A. I cannot answor that any more definitely than I hnvo
already done.
Q. Very well ; thon I must pass from it.
A. I linvo dono my best.
Q. Supposo Mr. Edison lmd had his machinery and ap¬
paratus all ready fitted up and working, oxoopt to attach it
to a wire, how long would it take todo that in yourjudg-
A. Do you moan ready to work, except the attachment ^
to a lino wire ? ,
Q. Yes, sir. Ho had made it all perfect in his shop at
Newark, or in your shop, and had it all ready to put up
and attach it to a line wire. How long would it tako ?
A. To take to put it up and attach, and to mako the
attachment?
Q. To tako and bring it from tho shop wlioro it was, put
it in attachment to tho wires, so thatit could bo worked ex¬
perimentally?
A. I don’t know ; it would depond on various conditions ;
948 I certainly tliinlc it could be done within throe or four days
Q. It might bo done in much less timo ?
A. If all the conditions and surroundings wero favorablo
the preparations of a battery is n necessary condition ; if tin
batteries were all prepared in advance, so that it involved
only the connection of a wiro, that could bo done in fivo
minutes.
Q. Your batteries would generally be in ordor?
A. These experiments required special batteries so as not
to interfere with the current work.
947 Q. They could bo all ready to bo attached at nnv
moment?
A. If thoy had boon arranged previously j I know that
special batteries were provided for those experiments on
the premises of the experimental rooms.
Q. For how long?
A. I don’t know.
Q. For months ?
A. I don’t know.
Q. When did you know it ?
48 A. I remember the batteries being there on the occasion
of this exhibition, in the presence of the Tima reporter!
how long before that I don’t know.
Q. Did you see that article before it waa written : before
it was published ?
A. No, sir.
Q. Did you hoar it rend ?
A. I think not.
Q. Are you sure. Was it not read to you in the pre¬
sence of Mr. Edison? J "
19 A. It may have boon, but I don’t remember it.
Q. Do you remember whether it was or not?
A. I don’t remember; that is my best answer.
Q. You don’t know whether it was or not ?
A. I don’t remember whether it was or not ; I don’t re¬
member what the article was.
Q. You read it, did you not ?
A. Undoubtedly.
Q. You know what it. who ■>
281
A. I do not say because I remember the fact when I read ggq
it
Q. You remember you did read it?
A. I liavo an impression.
Q. Tho article describes the result of the test, among
other things. Did you regard it as it is there stated 1
Mr. Lowrey : What is the pertinency of this, and how long
shall the examination continuo?
The Court: I think there may be a legitimnto object in
tho courso of tho inquiry. I do not deem it necessary to ggj
intorforo with tho cross-oxamination unless the privilege is
abused.
A. I did not write tho article ; I have not considered
that question.
Q. Did you consider it so at tho timo ?
A. I don’t remember what my judgment on that subject
was at tho time.
Q. “Tho test resulted successfully, and it proved that
four messages could be simultaneously sent over one wire.’’
Do you agree to that description of tho test ? 052
A. I didn’t sco tho test ; electricity is invisible. You
cannot see thoso tests. What have I got to do with that
paper? I did not write it; Ido not know whether it ex¬
presses my views or not.
Q. You have simply to give now your honest judgment
and remombrnneo about it ; I want to know that fact?
A. What fact?
Q. This : " Tho test resulted successfully, and it proved
that four messages can bo simultaneously sent over ono
wire?" 958
A. That statement is truo now, but really, I didn’t know
whether it was true then or not
Q. Didn't you understand it to be true ?
A. I think it was a little flowery by tho light I now
have.
Q. That “little flowery " comes from what has happened
' A. It has been improved npon Bince.
238
954 Court: You mean you tliink it was a little oxaggc-
rated?
A. A little highly colored j a little overstated. AH
these things have boon done, and are being done to-day.
Q. “ Two days ago was taken tho third great step, and one
not inferior to cither of tho others. It needs only to be
said of it to recommend it to the least scientific, that in ono
instnuco it will quadruple tho capacity of 176,000 miles of
wire." Did you understand that to he truo then when you
955 saw it?
A. Which part of it?
Q. Tho whole of it?
A. You want my opinion as to tho fnithfulness with
which this roportor did his work ?
Q. No, sir. Did you understand that to bo truo then, or
falso ?
A. I understood it to bo generally true.
Q. I call your attention to tho portion between tho brack¬
ets, that I have marked.
966 A. Tho first statement is, “two days ago was taken n
third great stop, and ono not inferior to either of the others,"
what particular stop was taken two days ago I liavo no
opinion upon.
Q. Go on.
A. “It needs only to ho said of it, to recommend it to
tho least scientific that in one instnneo it will quadruple tho
usefulness of tho 175;000 miles of wiro owned by the West¬
ern Union Tolegraph Company." That was overstated, ho-
cause that was three years ago, and they have not all heen
quadruplox yot.
Q. " It is a new process of multiple transmission by which
two messages can ho sent simultaneously, in the same direc¬
tion, over tho samo wiro. A short message can bo dropped
at any way station on the circuit."
A. That is truo. It is capable of quadrupling to tho
extent towhich it has been applied, and more— considerably
more ; it docs more than quadruplex the usefulness on tho
wire.
Q. “ Nor iB this all The old duplex system can be ap¬
plied to the new invention, and by the combination the four 958
messages can bo sent simultaneously over tho same wiro, in
opposito directions, between any two terminal points, and
not the least recommendation of tho discovery is that it calls
for no changes ; tho old Morse key is used without the need
of any now class of operators (as in tho automatic telegraph),
no duplication except as to tho parts of tho machinery."
That was so, wasn't it?
A. Substantially so. yes, sir. It requires some now ap¬
paratus added to it to bo used in connection with tho or¬
dinary Morse apparatus. 959
Q. " Tho invention is the result of tho joint labors of
Messrs. Georgo B, Prescott and Thomas A. Edison." Was
that true ?
A. I think it was.
Q. Wlmt makes you think it was ?
A. I think that Mr. Prescott and Mr. Edison had both
contributed to tho success of this experiment.
Q. As joint inventors ?
A. I don’t romembor that it says joint inventors.
Q. Tho words are, 11 tho invention is tho result of tho 960
joint labors ? ”
The Court: Tho inquiry is what makes you think it was
tho result of thoir joint labors ?
A. Because these two men, so far ns I know, had been en¬
gaged in tho development of it
Q. " And if not scientifically at least practically a great
deal of credit is nlso duo to tho enterprising policy of Mr.
William Orton, the President of the Company." I will not
ask you about that I will say it is truo myself ? 961
A. Don't do so, please.
Q. Of course it is needless to add that tho new system
will ho speedily put in practice by tho Western Union Co.,
by whom tho pntont is controlled ? "
A. That appeal's to have been a mistake.
Q. Do not laugh or joko under oath, if you please?
A. I beg your pardon, my answer to the question is, I
supposo it to bo controlled by them.
Q. “ It will make itself felt ir
10 ; for
instance, the Western Union Tel. Co. have been forced to
erect 00,000 miles of wire during tlio last three years, and
of course at an immense expense. An indefinite future
like this could not bo very satisfactory to tlio stockholder.
But with this, scarcely 2,000 milies need to bo erected and
every wire is practically four. But, without further enlarge¬
ment, and almost in tlio words of Mr. Orton, tlio discovery
may be called tlio solution of all difficulties in the future of
telegraphic science." Were those your words or almost your
96S words? J
A. I don't remember whothor tlioy woro or not.
Q. Bid thoy fairly represent your viows?
A. I had very exalted ideas of tho valuo of tlio inven¬
tion at tho time, and thoy have not grown any less.
■ Q. Now, sir, I dcsiro to ask you whether that was not
written in tho office of tho Western Union Tel. Co., and
whothor it was not submitted to you and to Mr. Edison for
examination ?
A. I don’t know whore it was writton. I had nothing to
964 do with it It was shown to mo before it was published,
I think.
Q. Have you such a momory as to say it was or was not?
A. I could not sny it was not or thnt it was, for tho aim-
plo reason that I am not able to remember.
Q. Who sent it to tho press ?
A. That I don't know.
Q. Who invited you to bo present at tho experiment in
your office to test it ?
A. I don't remembor.
nB_ tl'ore? tho Times reporter wo have heard.
965 Was Mr. Edison there?
A. It was my impression that Mr. Edison, Mr. Prescott
and the Time reporter, and possibly somebody else was
about tho building, but I don’t reinembor.
Q. And yourself?
A. Yes.
Q. That is all you now remember that i
A. There may have been more.
Q. Tbat-is all you remember ?
re present ?
A. Yes. £
Q. Was this copied substantially in tho Journal of Tele¬
graphy f
A. I don't remember that.
Q. Was there anything done by you, or by your direc¬
tion, to prevent any wrong impression being published in
regard to tho invention ?
A. I think not.
Q. Look at Exhibits 15 and 15a, and look at Exhibit 15a
first ; can you toll when you first saw that ?
A. I cannot. 9
Q. Within months ?
A. Not within months, no, sir.
Q. Turn back to Exhibit 15, can you tell within months
when you first saw that?
A. I cannot.
Q. Is tlioro a reason why that should bo put in its order
alter September 80th, rather than before ?
A. Nono to mo ; I had nothing to do with tho arrange¬
ment.
Q. When do you romomber first to have seen thorn ?
A. Tho original of theso papers ? 9
Q. Yes.
A I cannot fix tho date by anything in my memory,
oxoept by reasoning about it.
Q. You reason from tho context that thoy would be
likely to have been writton at such a time, I suppose ?
A. Within n certain year.
Q. But that is by reason ?
A. It is largely reasoning ; I cannot do better than that
Q. You have no momory ?
A. I don’t want to admit that I liavo no momory ; but 9l
my memory docs not fix tho time definitely.
Q. I will take your reasoning on this subject a little, and
tho first thing is, don’t you think thnt 16a should come
before 15 ? Please examine them carefully. (Witness ex¬
amines papers.)
A. Thnt scorns to bo nn inference, and yet the contrary
could bo established, it seems to mo, from them.
Q. Now, look at Exhibit A once moro. Mr. Edison
070 says tlioro, " my sliop is so full of non-paying work that I
should liko to saddlo this on tho W. U. shop where they
arc usod to it." Ho was evidently working in his own
shop then, wasn’t ho ?
A. Ho was evidently carrying on n shop.
Q. Working this matter in his own shop, was ho not,
and ho wanted to got rid of this partioular work. If yon
turn back to Exhibit 15 you will seo tho two together,
“ working in shop two messages in tho snmo direction, otc.
I want tho loan ofthreo duplexes, sounders and ono Phelps
071 relay for a week."
A. It would not bo a violent presumption that they wero
both producod togothcr. '
Q. Soon nftor — ono after tho othor 7
A. Or, porhaps, ovon both togothor. His saying, "My
shop is so full of non-paying work," implies that it is neces¬
sary that somo work should bo dono in ordor to successfully
oxploit his idoa, and that ho would liko to hnvo tho West¬
ern Union undertake that work.
Q. Can you say, from your memory, whether those wero
072 rccoived at your offlee, or did tlioy go to Mr. Prescott?
A. I have certainly seen them beforo.
Q. When did you first seo thorn ?
A. I cannot romotnber.
Q. When is tho first time you remember seeing them ?
A. I cannot remember that; that is back ortho propara-
tion of this ease. 1 1
Q. You have no means of fixing the date, except reason-
ing from the contents.
A. Yes; I hnvo somo other means in my own mind
078 Q- By reasoning?
9)!°Uld ronaon from other H'ings than those,
ft . Sutler calls tho attention of tho Court to tho fact that
ofExhi VtlT Pr!nl0j th° P°"0il mcm°r«ndum on tho back
of Exhibit 15, and states that it should be stricken out
Ur. Lowrey: It will bo stricken out from tho proof
No^n t0 J°U’ in 11,0 first about Exhibit
• u. Uo you know about whon you first bsw that?
287
A. I don’t romombor ovor to hnvo seen it beforo. 974
Q. You cannot locato it at nil ?
A. No. sir.
Q. Now, take Exhibit 21. It is evident that you saw
that on tho 10th of September, 187-1 ?
A. Yes.
Q. What wero thoso six relays, oto.. therein mentioned •
for. Wero tlioy not for qundruplox instruments for com-
ploto sets?
A. That would bo a mero inforenoo. I do not know of
my own know-logo nor of my scientific skill whether tlioy 075
wore or not; it is an inforonco. .’
Q. Hnvo you any doubt in your own mind that thoy
wero for complete sets of qundruplox ?
Vie Court : That is in evidence and has boon provod.
A. Ihavo an impression, but, as I hnvo told you, I am not
an expert in these matters.
Q. You say in your pencil memorandum that you will
put tho speed into them afterwards?
A. I may have known at that time, that what it was 975
about, but that does not rceall it to my mind now.
Q. You bclievo from your examination of that papor,
that thoso articles wore for how many completo sets of qua-
druplex?
A. Six, I think.
Q. Wore thoso intended logo on your lino and to bo put
in actual operation?
A. I havo no recollection at present about that.
Q. Look at that memorandum in which you say, "I will
put tho speed into thorn aftorwnrds.” Where wore you going 977
to put tho speed into them, if not on your lino?
A. Probably that was tho idea.
Q. But you cannot rccolleot whothor that was so or
not?
A. I boliove it was with that viow, but is not because I
recollect it now.
Q. You don't know now whether it was so or not?
A. No, sir.
r8 Q. Assuming that yon yourself were hurrying up to hnvo
this comploto quadruplox instrument on the 19th of Octo¬
ber, 1874, you had come to tho conclusion then that tho
matter was so far a success as to put it into actual opera¬
tion on your line, hadn’t you ?
A. I have no recollection as to what was in my mind at that
time. That order was written by Mr. Edison and brought
back to bo signed by me. I merely signed it and added that
note in pencil, but for what ho intended thoso instruments
at that timo I lmvo no recollection now.
9 Q. You probably know what they were for at that
timo?
A. At that time yes, probably.
Q. You had no doubt that theso instruments wore tobo
mado and to bo put into practical use on your line, had you?
A. I lmvo no doubt but that they were, but I don't re¬
member that I knew it at tho time.
Q. And they were mnde to bo put into actual use on your
lino ?
A. I don’t know that of my own knowledge.
0 1 0. Blow soon after were you putting in nctunl use on
/ /your lino tho quadruplox and transmitiing business messa-
'I Sea?
A. I thinkjust ns fast ns wccould.
Q. That is very indefinite.
A. I think wo began in the summer of 1874, soon after
those oxperinents were reported in the Times article. As
rapidly as the apparatus could be turned out and tho defects
oured, the bug-traps mado and tho bugs picked out, they were
set up one after another on the line, tho first ones were be-
j ing taken down and brought back and improved ones put
in their places, and that work practically has being going on
ovor since.
(Eeccss.)
After Beoess.
Q. I now desire to ask you, if yon will allow mo, pass
ing over Exhibits 22 and 28, in regard to Exhibit 247
A. I havo it, sir.
o or threo or four ot
289
Q. Can you tell, from your own knowledge or remem- 982
bnincc, when that was received by you, if it ever was re¬
ceived?
A. It wus received by me. It was handed to me by Mr.
Edison himself, but there is nothing in tho fact that it was
handed to me that would lix the lime in my mind.
Q. Then you have no memory ns to the timo itself. Can
you toll within ten days when it was handed to you ?
A. My memory of it is ns a part of a transaction to
which it was preliminary.
Q. That transaction was tho payment of the $5,000 ?
A. Yes.
Q. And therefore it was handed to you immediately be¬
fore that?
A. It was before that.
Q. Immediately before?
A. Immediately beforo-a few days bofore.
Q. By a few days, do you mean two or thro
five?
A. Two or threo, probably.
Q. Wo will say, for convenience, between tho 6th of De¬
cember and tho 10th it was handed to you? . 0£
A. That would bo my impression. Yes, if tho 10th is
tho date of the receipt.
Q. You seo that on tho other page. Exhibit 22 ?
A. Yes, I seo it. „ , , , ,
Q. Did Mr. Edison call more than onoo after ho banded
you that bofore you eamo to tho conclusion to pay him
$6,000?
A. I don’t remember.
Q. Wo will go back to tho exhibit datod Deoomber 10th,
which is tho rccoipt. You agreed to tho amount to bo paid fl,
to Mr. Edison, and tho receipt was prepared by Mr. Mum-
ford.
A. I believe it was.
Q, Had ho such knowledge or the condition of the ne¬
gotiation and tho condition of things generally, that ho
could intelligently prepare a rccoipt to express tho bargain
of the matter at that timo.
I
986 Q. You thought ho had or you would not have trusted
him with doing it?
A. Yes, sir.
Q. When you sent it to him to ho prepared you thought
that it would bo satisfactorily drawn ?
A. Yes, I think ho had assistance in tho preparation of
Q. Either professional assistaneo or otherwise V
A. Yes.
Q. Ho had professional assistance, had ho not ?
187 A. X think so.
Q. It is your remembrance or belief that ho had ; itscoms
to bo a very technical paper?
A. Mr. Mumford was himself an attorney.
Q. Now, I desire to ask you when did you first claim
that you had mado any bargain to purchase tho quadruplex
telegraph invention ?
(Ur. Lowrey objects to tho question on tho ground that
counsel for tho Western Union Co., which is tho defendant
88 in tho suit, will state what tho claim of tho company is, and
that it is not proper to ask tho witness in regard to it ; that
ho has nothing personally to do with tho olaim, and that it
is not proper to argue with tho witness in regard to his un¬
derstanding ns to what the claim of tho company is.)
Q. When did you first claim that you made a bargain
with anybody, and when I sny you, I mean you as tho
agont of tho Western Union Telegraph Co., for tho pur-
chase of the quadruplex invention of whoever owned it,
whether Mr. Edison or Mr. Prescott ?
19 A. My opinion on the subject of tho olaim of tire West¬
ern Union Co. that it is based upon the agreement of
l'cbruary, 1878. It was running all the time.
Q- And that is your opinion acting for the Western
Union Co.; you made olaim in your own mind to own it
from that time?
A. That is my opinion of tiio claim.
Q. And from tho time you mado tho bargain you had no
diflerent opinion ?
2-11
A. I cannot undertako to recollect tho opinions that my ggg
counsel oxpressed to mo and the ndvico they gave mo on
tho subject. If your Honor will permit mo to say so, it
seems to mo thnt I am being asked to state a legal conclu¬
sion and thnt this is a question for counsel.
Q. I am not asking you for any legal opinion. Tho
question is have you ever had any diflbront opinion sinco
that time down to to-day.
(Objected to ns immaterial. Admitted.)
A. I don’t know thnt I have. I don’t romember. 991
Q. You don’t romoinbor of over oxpressing a diflerent
opinion ?
A. I do not.
Q. Did you think you owned tho qundruplox by any dif¬
ferent title than tho 0110 by which you own tho duplex ?
A. I never considered thnt brancii of tho subject, I
don’t know that it is divisible.
Q. [Handing witness report] Is this your report for tho
year 1874 ?
A. It is. 992
Q. Written and published by you?
A. It is published by mo at least,
Q. Written by you except whoro you quoto from othor
people?
• A. It may not linvo been writton by mo.
Q. Look at tho ditto at wliioh it is writton. You put
your nnmo to it, did you not?
A. Yes, it was published by mo, and I think was sub¬
stantially writton by mo.
Q. It contained your understanding of tho matter at tho 993
time, didn’t it ? . T1 ..
A. I think it did. It is a long time since I have read it.
Q. You have no reason to suppose it did not l
A It did at the time.
Q, Do you recognise this so, itenee: “The quadruplex,
like tho duplex, is partially substituted for working in con¬
nection with tho Morse apparatus. No change of tho ordi¬
nary operating force nor in the previous preparation of mes-
994 sagos is required, as with the automatic system, so that tho
continuance of the same simplicity and economy of manipu¬
lation and promptness of service which lmvo character¬
ized tho Western Union Co.’s system of telegraph is assured.
All the patents for tho duplex aro owned by this company.
Negotiations for tho purchase of tho patents of the quadru¬
ples are pending after tho character and extent of its ca¬
pacity for working hnvo been fully ascertained." This was
tho 14th of October, wasn’t it, that the report was pub¬
lished?
A. Yes.
Q. Do you see anything thoro that looks liko a distinction
between a quadruples and a duplex ?
A. Thoro is a distinction mndo there, apparently.
. Q. And a distinction in titlo, wasn’t thoro?
A. There is a distinction in this /act, that the prico for
one had been fixed and paid, and tho prico for tho other
had not been fixed.
Q. From February fltli, 1878, down to October 14th,
1874, had you paid Mr. Edison any monoy on ncoount of
the duplex invention ?
A. Not that I know of.
Q. “By duplex," in this sentence, did yon not includo
Mr. Edison’s invention ?
A. As a mere matter of present belief of wlint I meant
then, I should say I didn’t moan to includo Mr. Edison’s in¬
vention.
Q. You meant simply to inoludo Stenrncs’?
. A. Yes.
Q. Which had been in operation ?
A. Yes.
Q. Then you say, " The duplex apparatus of Mr. J. B
Steam, by moans of wliioli two messages aro transmitted in
opposite directions upon one wire at tho same time has fully
sustained tho opinion of its utility and value which I ox-
pressed in my last annual report. It has boon, put in oper¬
ation, during the past year, upon a number of additional
circuits, and is now working satisfactorily between all tho
principal cities. Its latest application was upon tho lino to
248
tho Pacific coast, and it is now in use between Port.Hast- 998
ings on tho island of Cape Breton, whore our lines connect
will, tho cable wires and San Francisco, a distance of nearly
6,000 miles. But tho past year has produced an invention
more wonderful than tho duplex. Mr- Thomas A. Edison
and Mr. George B. Prescott, the electrician of tho company
have discovered processes and invented apparatus by means
of which two messages can bo sent in the “ltn0 . ' , '
anil two other messages in an oppos.to direction simnltano
ously upon the same wire. This invention, which they
have christened the quadruplex, has been in success u 999
operation between our Now York and Boston oto. fo
reasonable dividends ti tj,#t it seems more
accomplished, and i» » , f lly realized than that
likely that these prod ton wJM«ota y ^ ^ It is
the 0f nil invention which enables
not easy to estimate tuo vai nrincinal cities in tho
any and ovory wiro bo we j tj10 i>aoifio coasts, to
country and between ho At lanuc^and ^ ^ &
bo made equal to n » ability to practically con- 1001
button, but it is very nvidcit thcjbdity top ^ ^ oonvo.
1002 A. Tea; on a circuit for that distance.
Q. Was it valuablo on that kind of circuit, ns you hero
A. Yes.
Q. In other words, that it was, so far ns tho length of
these circuits between Hew York and Boston, or something
liko that, was concerned, an entirely completo invention?
A. I think so.
Q. You thought so then ?
A. Yes.
1003 Q. On tho 17th you gave this order for six sets ?
A. If that is tho date of tho paper.
(Defendant’s counsel nsks that tho paner bo marked in
evidence.. Plaintiff's counsel states that they do not desiro
to put it in ovidonoo. Defendant's counsol puts tho same in
evidence, and is marked defendant’s Exhibit Ho. 41.)
sanf / °nU y°Ur ntt0"tion t0 Exbibit No- 28. (Roads
1004 /nA'- Vr":’ 'ik° t0 800 tbo orlS‘ni'l of that exhibit.
(Original handed to witness.)
Q. When was this copy made (handing witness copy)?
A. It is tho original paper.
. Q. Whoso handwriting is that pencil memorandum, which
says that tho original was given to Edison ?
II. They wero in duplicate ; it should liavo been dupli¬
cate instead of original; they wero botli signed at tho sumo
timo; Mr. Edison presented two to me.
Q. And you signed both ?
1005 A. Yes.
Q. You kept one and ho took tho other ?
A. Yes; ho stated a particular reason, I recollect, for
giving them to mo in duplicate.
. Q. Please state what that reason was ?
A. Uo said that by leaving one with my signature to it
. wouid enable him to get whatever credit he required for
any material that would bo necessary for him to purchase in
order to produce these instruments.
JL/i11” *” » ta
245
A. I really don’t know that. 1008
Q. Givo us some approximation.
A. I supposo $5,000 would bo an approximation.
Q. As much as that and perhaps moro ?
A. Yes. . .
Q. Ho stated to you it would secure him credit— that if lio
had your signature to one of those papers, it would enable
him to get credit? ,
A. That was said, I think, in roply to a suggestion by
4 What was that suggestion? 1007
A. Shnn’t I begin at tho beginning of this conversation?
Q. By nil means.
A. Ho enmo to my desk and produced these two papers*
and said, in substance, that his shop was needing all tho
work he could get, and that as we were going to requue a
lot of apparatus ho would like to have the Job o ' ' b S
them, and asked me to do him tho favor toie ™™^
the twenty sots; lie had drawn these orders to that effect,
I said, “ Certainly, you oan make twenty sots and I will
arrange with Mr. Hunter, our superintendent of supplies 1008
(whoso duty it was to rooeivo such property and tnko enro
of it and pay for it), so that you may receive on aeeoun as
the work progresses;’’ ho said ho didn’t need that but t at
ho had prepared these orders in dupieateaudthat.fi
signed one and gave it to him it would enable him Oot
whatever credit ho might require.
Q. These were to be done in iiay-flve days, I believe?
A. That was his own proposition.
» i w x»
lief that they were not delivered to us.
Q, Were they delivered r
A. I think not.
ofii'vfnS'iht 0f
tee sets something happened. „nt delivered
Q. Something had happened and they were not delivery .
I dire to ask you now when, if at that tune, any new no
246
247
1010 gotintions had been opened with Mr. Edison about tlio pur¬
chase of the quadruple* or duplex, or as to price, in any
form?
A. I til ink, from the dates of these papors, that negotia¬
tions for fixing tho prico had been in progress for somo
little time before.
Q. Look at Exhibit 27, that is dated Now York, December
10, 1874, can you say whothcr it wns delivered on that day
or on the next day after?
A. I have no spoeiflo recollection of the transaction ns to
1011 say.
Q. That wns delivered to you at or about the time of its
date, and that is tho ono you told him tho stenmbont story
about — about tho olork who wanted to own the steam¬
boat?
A. I think it is; yes, sir.
Q. Tlion, how many days before you reooivod Exhibit
26, tho undated ono, called “ two propositions ?"
A. I don’t remember how many days ; it wns very soon
after that.
1012 Q. You wero kind enough to toll us thnt cortain flguros
were mado after you sent him away with tho steamboat
story, and brother Lowroy said ho would lrnvo them?
Jfr. Lowrcy: I hnvo not yet been able to find thorn ; thoy
aro among somo papers thnt I hnve mislaid. I may And
them this evoning ; I will try to do so.
Q. Can you toll us what thoso figures aro in tho absence
of tho pnper?
A. I cannot. If you will allow me, I think the paper
wns handed to me within a day or two after this by Mr.
Prescott, and not by Mr. Edison.
Q. Didn’t you tell us before, on tho stand, it was handed
to you by Mr. Edison ?
A. I don’t remomber what I told you. I don’t remember
whnt I snid then, but my best recollection at this moment is
that thnt paper was earned away by Mr. Edison (this paper
I mean) with my pencil indorsement, rccpicsting that tho
proposition be reduced to figures, and thnt tho paper camo
back to me, and wns handed to mo by Mr. Prescott; cor- 1014
tainly it is in Ins handwriting.
Q. You moan Exhibit 27 came back to you?
A. No, sir; I don’t remember ns to that
Q. You think Mr. Prescott brought you the figures?
A. That is my impression.
Q. He brought you Exhibit No. 26 within two or tliroo
days?
A. Yes, a few days; I cannot say whether it wns two
days, or five days, or ten days, except thnt it wns between
this date nnd my leaving tho city for several days absence.
Q. Thnt is tlio 81st? 1015
A. Yes.
Q. Who brought it?
A. Mr. Edison brought mo No. 26.
Q. Did ho hnvo a copy of tho figures made by Mr. Pres¬
cott?
A. I don't remember thnt thoso figures wero produced
nnd discussed in connection, yot thoy may have been.
Q. But hnvo you any memory thnt they wero ? Try and
refresh your memory nnd got at wlint wns discussed, if you
can?
A. My best recollection on thnt subject is general. 1016
Q. Hnvo you any?
A. I have.
Q. What is it?
A. My best recollection is that theso figures m Exhibit
26 will bo found to boar somo rotation to tho figures on tho
paper thnt wns called for by my indorsement on tho back of
it
Q. That would bo likely ; is thnt a mnttor of memory, or
n matter of reasoning?
A. It is a matter of mornory. 1017
Q. What relation did thoy bear, do you think ns a matter
of memory?
A. My recollection is not sufficient to state.
Q. Wore thoy greater or less, some of them ?
A. I don’t remember ns to that ; my recollection is only
clear ns to somo things that wero said in connection with
1018 Q- Now, sir, at that timo didn’t Mr. Edison press you for
money, and say tlmt his shop would bo stopped, and his
men would lmvo to bo discharged, if ho didn’t got somo ?
A. Ho did not.
Q. Did ho say anything on that subject ?
A. Ho said nothing on that subject at all.
Q. Did Mr. Miller bring you a letter from Mr. Murray,
saying, in substance, that if you wero going to Chicago, you
must close this bargain, for Mr. Edison would not stand it
or words to that effect? ’
1010 A- I tliinlc I can answer that question, and others that
you may ask, by saying that Mr. Miller brought mo no lot-
tor from Mr. Murray, nor showed mo any.
Q. How did Mr. Murray make you tho communication
that it would bo bettor if an annual sum could be paid to
Mr. Edison on account of his family ?
A. It was anterior to this particular occasion that you
rofor, but not a great whilo boforo; it camo from Mr.
Miller also.
Q. Was it in writing?
10 A. No, sir.
Q. That was what Mr. Miller said ?
A. Yes.
Q. Thou, why did you givo Mr. Murray ns authority, and
say that ho was Mr. Edison’s business partner, and that
ho suggested that this form of paymont should bo made in
plnoo oi a speoiflod sum in hand, when it wns Mr. Miller .
who made this suggestion to you, who was your secretary ,
of the Gold and Stock? (
A. Mr. Miller had no connection whatever with the Gold
1021 and Stock, nor with tho Western Union at that timo, and
ZKSSw"’*”” .
A. I don’t remember why I did not. If I could sco tho
sequence of the questions and answers I might state. I
' . sa? t1h.at,tho hnpressiou upon my mind wns at tho timo
1 testd ed boioro, that Mr. Murray made tho suggestion to
o, but I now state it was also made by Mi-. Miller, and ^
we cm,r^rq"i0Se0!1 1,1 t0° by ^ ™ison himself, 1c 10oo
no camo to discuss tho details.
son ? Sny tlMlt Mr> Mlll« is " neighbor of Mr. Edi-
A. 'flint was my understanding.
Q- Did ho livo in tho snmo town ?
A- I don’t know what town either of thorn lived i„.
T i'0" "'l,y <lil1 .vou toll us Im was his neighbor?
w„„ . , JVIW "O’ impression or my belief, that Mr. Miller
"as in tho habit of mooting 1dm daily.
Q- Can you toll us anybody who gavo you that belief?
A. I don’t think I can givo you tho origin, growth and 1028
development of that liolioff
Q. Mr. Edison brought you that second paper, which is
called “ two propositions," boing Ex. No. 20. Will you
have tho kindness, ns you lmvo told us with such clearness
of memory wlmt took placo whon No. 23 wns delivered to
camoln with'thau'"'1 °l0!U'n°SS’ 'vllat ,vas sai(1 whon’ ho
. A. I don’t romember.
Q. Wlmt wns tho first thing?
A. I don’t romombor who spolco the first word, nor do I
romember wlmt wns said first. 1021
Q. Who do you first romombor sponking ?
A. I lmvo no recollection ns to that.
*i.3n °?U yo“ to11 1,10 who yo» roinomber sponking first _
*1'° 'v°rd you do remombor, and who spoke it ?
A. I lmvo no distinct recollection ns to tho ordor of
ot cuts, nor vory much ns to wlmt transpired.
bodylidVhenT ^ "° 1'°m°mb0r
A. Tho (list thing I romombor clearly was a comment
made by mo upon tho proposition for a royalty that do- .
ponded upon tho number of circuil s used 1 lie suggo tion 1026
wns whether it was not bettor to lmvo a fixed sum than
an uncertain sum, which would require an accounting every
time there i wns a settlement and givo occasion for dispute
as to whothor tho accounts were correct or not
Q. What wns next said, if you romember?
A. I don’t recall anything moro particularly.
, ,y 11,1,1 oxlln,,st your momory. Look at that exhibit
and givo mo tho very best result of your memory ns to
251
1026 anything Hint was said at tliat time, and wliat took plaeo
on tlmt occasion.
A. AViint I said boforo in reply to your oilier question
was anterior to wliat 1 now Intend lo say.
Q. State just wliat occurred, and in tlio order in which
it occurred ?
A. I am not aide to stato whether wliat I havo stated
occurred in just tlio order or not.
Q. Stato tlio order of tilings tlmt occurred as you now
remember it?
A. So far ns I remember, wliat I havo slated already
1027 came in order in advance of what I am now about to state.
Q. Then thoro is something more. I thought you told
mo there was not anything more, nad Hint what you have
Btnlcd was about all that took plaeo ?
A. My recollection is that I said at that interview that ir
ho bad asked me lo make a proposition, which ho had nover
done, the difference between wliat I myseirshould have of¬
fered and what lie proposed, wns not great. I remember
distinctly what 1 snid in regard to one item tvhioh was, that '
I should have offered him §20,000 instead of $25,000
1028 "'liioh he had on Ins memorandum. I told him that if ho
had nsked me to make a proposition to him, I should havo
oilered him $20,000 instead of $25,000. The diilereneo in
regard to the other two points I think wns that I suggested
i 1 ,nt wu s1,ohW ,1x " sum of $10,000 per annum in lieu of
the royabt.es for a period, I think, the first suggestion was
for ton years; and Mr. Edison suggested that if there was
a good reason for its running ton years tlioro was a good
reason why it should run for the snmo period ns tlio patent;
I or words to that eflfcol, which wns about 17 years.
1029 Q* And its extension?
A. I believe there aro no present extensions.
Q. A\ hat else was snid. I want to get at all that took
place, and 1 want you to exhaust your memory in regard to
that occasion and wliat occurred ?
A. I think I slated then that I wns eoimr to Ohiemrn in
Q. "What did Mr. Edison say to that?
A. I am not able to give you the language. loqo
™ l.‘°n •y0" susgest°l1 t,mt ->’ou would have offered him
$20,000 instead of $25,000, did ho agree to that?
A. I don’t think ho did.
Q. Wlion you suggested ton years ho disagreed to that?
A. ITo dissonted to that in so far ns I havo stated,
Q. And tlio only other tiling you said was that you woro
going to Chicago in a few days, and wlion you returned you
would fix tlio thing up. That wns outirely satisfactory to
him, wasn’t it? J
A. There was no cvidcnco of dissent. I don’t remembor ion
tlio precise terms in which ho gavo his assont
Q. Do you remomber any terms in which liosavobis
assent ? n
A. I don’t remombor what ho said.
Q. Didn’t ho say to you tlmt ho wns in want of monoy ?
A. He didn't say anything about monoy on tlmt ocoosion.
. Tlio matter of money enmo to mo through another source,
and thoro wns somo misunderstanding about it.
Q. Who wns the other sourco ?
A. Mr. Miller.
Q. You know ho wns in want of money, and Mr. Millor,
who was a neighbor of his, ns you supposod, was trying to
got monoy from you ?
A. No, sir, ho was not trying to get monoy from mo. It l
was nevern violent presumption that Mr. Edison wnntod I
monoy. - - - - - - ' - -
Q. Was it through Mr. Millor, or was it from a violent
presumption that you know or buenme aware of his want
of monoy ?
A. Shull I stato what transpired between Mr. Millor and loaq
myself?
Q. Not yet Was Mr. Millor trying to got money to pass
between the Western Union Telegraph Company and your¬
self and Mr. Edison at that time ?
A. lie was not
Q. Did you innko any advance of money or anything our
of which Mr. Edison could make money, directly or indi¬
rectly ?
1034 A. Wot tlmt I am aware of. Mr. Miller made no applica¬
tion to mo for any monoy.
Q. Did you learn from any source that Mr. Edison was
in want of money, and that his shop was liable to ho shut
up?
A. All that I knew on the subjeot was what Mr. Miller
stated to me.
Q. Did you learn that from any souroo 7
A, Nothing about his shop being in danger of being shut
up— nothing about his shop at all. It rolatcd to something
1035 else.
Q. After Mr. Edison loft, did you liavo any further con¬
versation with him until nltor April 1st, 1875?
A. Yes, I had a few words of conversation with him.
Q. When ?
A Two or threo days after this interview in my olTieo.
Q. What time was that?
A. It was probably the day or day before I went to Chi¬
cago— tho 80th or 81st.
Q. Haven’t you testified that this paper was brought you
1086 on tho 80th?
A. I may have so testified.
Q. Was it truo ?
A. I want to innlto a statement in regard to that, and I
think I am ontitlcd to do so.
Q. Haven't you nnd your company moro than onoo, and
in more than ono form, sworn that that was brought on the
80th?
A. You moan in regard to this particular transaction.
Q. Yes.
1087 A. It may liavo boon.
Q. Now, do you remember what day of tho week that
was?
A. No, sir, I do not.
Q. Will you swear that you saw Edison after that before
you loft for Chicago ?
A. I think I did ; yes.
Q. Will you swear you did ?
A. I think I did.
Q. Is that all you can say ?
I
■#}
r
A. I believe I did. 1038
Q. Have you a memory that you did?
A. I am stating this from my best recollection.
Q. Have you any memory of it ?
A. I have.
Q. When do you think it was ?
A. Probably tho next day.
Q. It was not two or threo days after?
A. I think it was probably tho next day.
Q. Havo you a remombranoe that it was the next day ?
A. I don’t make that statement entirely from my reool- 1039
lection of the fact that it was the next day.
CJ. It is partly from reasoning?
A. Partly from reasoning ; it may havo boon on tho same
day.
Q. Why did you tell us first that it was throe days after¬
wards ?
A. Because I didn’t mean to bo oxplioit, nnd I didn’t
mean to loonto all these things down to particular dates ; I
have already stated that I locate thorn between two fixed
poriods, ono of which wo havo got hero, and the other wns
fixed by tho time I loft for Chicago; I mean to be just as 1040
particular ns I can.
Q. And, now, you do locate thorn on a particular day ?
A. I think that Mr. Edison came in on tho day before I
wont to Chicago, but whether both occurrences took plaoo
on the same day, or whether ono was on tho day beforo
nnd tho other on the day I loft for Chicago, I cannot re¬
member definitely about
Q. At any rate, ho called on you with what arc called
tho “ two propositions," and then ho called on you after¬
wards? 1041
A. Yes, sir ; I think so.
Q. You are sure of that ?
A. I think so.
Q. What did ho call on you for?J
A. I don’t know what ho callod on mo for.
Q. What did he say ?
. A I don’t remember that ho said anything.
Q. What did you say to him ?
254
1042 A. I remombor speaking to him about a matter that was
lying on my desk, that I had been obliged to give some at¬
tention to on that very day, and that was the subject of
railroad signals; nnd my memory is refreshed in respect to
that by reading Mr. Edison’s own testimony.
Q. What else said ?
A. I don't think that anything else was said ; I recollect
nothing but that.
Q. Nothing but that you said something to him on tho
subject of railroad signals?
1048 A. Thero was nothing said nbout money on oithor of
theso two occasions ; I have already alluded to tho fact that
there was a misunderstanding in regard to that which I can
explain,
Q. I call your attention now to plaintiff’s Ex. J, to whioh
I oalled your attention yesterday, a letter whioh you showed
to Mr. Serrell ; I call your attention to it for identification ;
you had written him a letter on that day?
A. I don't remember ; it is among tho papers here.
Q. You will find it right there?
1044 A, The 19th of January.
Q. Did you say that you could not get that letter to
him?
A. No, sir ; I did got it to him.
Q. But alter delays?
A. I don't think wo had any delay in getting that letter
to him ; wo had difficulty in getting in communication
with him.
Q. You sent that letter to his house, didn't you ?
1045 A" * sent t*mt l°ttor him through General Marshall
Lefferts. .
Q. You don’t know whether he over got it?
A. General Lelferts returned and reported to me that ho
delivorod it.
Q. You don’t know that ho did dolivor it at all ?
A. Mr. Edison has sworn that he did rcceivo it and I as¬
sume that to bo true.
Q. Without arguing tho matter, when did you first begin
to look him up for tho purpose of closing this bargain ?
A. I began to look him up immediately on my return
265
from Chicago, whioh was, ns I have already stated, on the 1046
11th of January, whioh was Monday— that is to say I began
to make inquiries.
Q. Now, sir, when were you first authorized to make this
purchase ?
A. Authorized in what manner ?
Q. In any manner ?
A. Do you mean ns to my rights, or as to my power ?
Q. Your authority ?
A. Whon I was olooted President of tho Western Union
Telegraph Company. 1047
Q. Did your company so understand it?
A. I don’t know, they are nlways in the habit of ratify- /
ing and confirming any such notion of mine. /
Q. Didn’t thoy raiso an executive eommittoo to take this
thing into 'consideration nnd deal with it ? I
A. I am not aware of their raising the executive com¬
mittee for that purpose. I
Q. Didn’t thoy ruiso an oxeoutivo eommittoo? |
A. A sub-committee.
Q. A sub-committee or a branoh committee, or any other til
eommittoo?
A. I have no presont recollection at all on tho subject ; it
may have boon done.
Q. Wasn't it on tho 19th of January whon a eommitteo
was raised by your company consisting of you nnd two
others who woro empowered to take this matter into con¬
sideration ?
A. Very likely; I don't remombor it now.
Q. Don't you remember thero was such a committee ?
A. No, sir, I do not remember ; the records will show.
Q. Had you ever cousultcd with such a committee?
A. I have no recollection of any consultation with such
a committee.
Q. Didn’t you writo that loiter after or beforo the com- I
mittee was. raised? |
A. I don’t remember.
Q. And whether you had such a committee, and whe- j
ther you consulted with such a eommitteo, or whether there
was suoh a committee raised at all in regard to the matter I
you have no knowledge? I
266
1060 a. I have no recollection ; perhaps if I should consult
the record mv recollection would ho refreshed.
” you ho kind enough, if your counsel wilpermrt
you, to produce the records and see if such a committee was
raised?
Q Was not that committee raised for this very purpose
„„ii. ruised. a i. MmOr »”1‘ »' “
1061 for what purpose it was raised.
Q. Iam trying to bring to your recollection all of the
surrounding circumstances, so that you will not have .to .o*.
plain in the morning. I want your best recollection upon
this matter, wliioli is a very important one. Is your mcm.
ory ontirely blank on this subject?
A. As to what? . ,
Q. As to tho question whether a committee was raised
OTA!t Since you have asked mo tlicso questions, thoro seems
1052 to grow out of it a glimmering recollection that thoro was
some such committee. _
Q. Does that glimmering recollection now come to tnc
fact, that tho committeo was raised for that purpose l
A. No, sir ; it docs not como to that. It is sometimes
deemed advisable to ratify in a formal manner, that which
has previously hoou done.
Q. I am not asking you about votes of ratification. W ns
there, for tho purpose of taking this matter into consider¬
ation, such a committeo raised l
A. I will bring you the records in the morning ; I cannot
swear from recollection. j . ..
Q. Has not your company sworn to this very fact, in tho
courso of this controversy ?
I A. Wo keep a swearing department, and I am unable to
remember all that they swear to.
Q. Who is its manager?
A. Messrs. Porter, Lowrey and Soren.
Adjourned until to-morrow at 11 A. M.
ij Heading Resumed. 1064
I May 23c?, 1877.
Mr Lowrey: When the letters of Mr. Davidge was read
the other day, I made my pledge to tho Court to produce a
V sb<Tw!10re the papers came from, and if General
1 ®U“or V 1 bopklnd cnoueh suspend his cross-examination
I ’ i ? f°r.n f0W m0ments 1 "'m PU‘ « witness upon
J tbo 3tand who will testify whore tho letters came from. ‘
1 u ^rBf"‘ler ; ■For 1 don’t oaro whother you show
1 1066
I .. .ffe C°uri: lr“ny question in reference to it is waived
I I is li nrdlv necessary to in trod uco a wi tness.
i T M'-Bufor : I assume that they camo from Mr. Davidco •
1 ‘ see r8"S0I> why wo should not take that fact for
Oross-eccaminalion of Mr. Orton resumed by Mr. Butler.
1 f0}. 'voro aPenkine last ovoning ns to whother or not 1056
the o had been any meeting of tho executive committee of
y.our board in which a sub-committee was olioson to deter-
! tbls 1?“,tl0r of ^undruPIux and duplex. Have
; you tlio books of tho company that show that meeting ?
,; i A. Yes, sir ; I havo not tho books but I have a certified
| from tho,ni oortified to by tho seorotary of tho com-
Mr. Bailor : I should prefer to seo tho books.
•j ha:° mado a Poraon;|l examination of this 1057
~ °°P> a,ld 11 13 3 literal copy of all them is on tho subject
! Mr. Lowrey : Wo will send for tho books,
i Mr. Bailer:
1| Q. Tho /book is not a verjHargo book, I supposo?
1058 The IKiVncri: No, sir, it is not very large, but tbore aro
a good many other things in it.
Q. Yon were asked by Mr. Lowrey whether you knew
of a bill in equity brought by the Western Union Company
in New Jersey against Edison and you answered yes?
A, I knew tho fact generally that thero was a suit
brought
Q. Was that brought by tho order of that committco ?
A. I don’t remembor whether there was any special order
of tho committee on tho subject
1059 Q- ftwns brought by your order?
A. It cortainly was brought by my authority.
Q. Did you state your caso to your counsel ?
A. I did undoubtedly.
9; ,??'d l’ou Put that case as you then understood it, in
tho bill of equity?
A. I havo no recollection of wlmt there is in tho bill.
Q. Did thoy at tho time?
A. I prosumo thoy did.
Q. You havo no doubt about it, havo you, in your own
1060 mmd?
A. Nothing has occurred to olmngo any impression that j
I may have had at that time.
* (Dld J’ou sln,t0> \n t,mt w». »ny claim whatever for this
mvention of quadruples and duplos under any agreement
A. I don’t remembor any statement in tho bill.
Did you instruct your counsel to act in such a man- |
A- I don’t remember any instruction that I gave.
10“ oi,t “"S'4" »<
a l<i°r’t kl,T 1 t!i° £oimclation of what claim ?
Q- lhe foundation of the bargain of February, 1878. f
t Did vo„nb 7 T® “ t0 Wlmt is in tlmfblll. ;
the purchase of Edison andVrcscott °Imm Wh°Uy 0“ ■
intha^’r0 n° recolloc.tion ns ‘o what instructions I gave ’
tL:U cas0' My if you will allow me to state |
■is to take tho advioo of my counsol in suoh a proceeding 1062
; i and I know of no reason why that was not tho course fol¬
lowed in that instance.
Q. But before you could got tho advice of your counsel,
you had to instruct them to tho facts, didn’t you?
A. In that sonso, yes, sir.
Q. You havo to toll them facts boforo thoy can give you
tho law applicable to the facts and their advice in relation
thereto?
A. Yes.
i Q. I desire to ask you whether your claim or bargain 10G8
was made at and previous to January 1st, 1874?
Mr. Lowrey: Since tho bill in whioh tho wliolo olaim is
j set forth is boforo tho Court, it seems unnecessary to ask
tho witness what tho claim is since it can bo road, Wo
: havo no objection to the bill going in.
| The Court : Tho bill speaks for itself.
(Mr. Butler roads bill in evidence, marked Exhibit Z 6.)
Q. I wont to ask you if on tho 18th of October, 1874, a
notice was not served on your company by Mr. Honnon,
solicitor for tho plaintiffs, in a suit ponding boforo tho Su¬
perior Court in this city, botwcon Craig and Brown and
Harrington and Littlo and Edison, tho Automntio Tele¬
graph Company and tho Nationnl Telograpli Company, de¬
fendants, notifying you that Mr. Harrington olaimcd all
Edison’s inventions, and sending you a printed copy of tho
bill in that caso in whioh Mr. Harrington’s titlo was fully
sot out ?
Mr. Lowrey: Wo object to that quostion, and to any
question whioh states tho contonts of a notico, without
handing tho notico to tho witness and asking him if that is
the notico served upon him.
Mr. Butler : Thou will you pleaso produce tho notico ?
(Mr. Lowrey produces tho notico.)
260
261
1066 Q. A bill and notio3 wore Borvod upon you for your
company ?
A Do you mean tlieso l (Referring to papers handed
•'"'a Yes.
A. I thinlc I have either seen this paper or a copy of it
before.
Q. And the hill?
A. I think I have seen this.
Q. You saw it about tho 18th of October?
1067 A. I have no rcoollection ns to tho limo ; I assumo that
it was delivered to me somo limo in tho year 1874.
Q. Don’t you know that it was in tho fall of 1874, whon
this was sorvod upon you?
A. I liavo soon those papers somewhere ; I have no recol¬
lection of the time whon I saw thorn.
Q. Don’t you know timt it was in the fall of 1874 ?
A. If I woro to answer that question it would not bo
becausa I romombor tho fact.
1068 (Mr. Butlor roads notioo in cvidonco, mn'rked Exhibit
Z 7.)
Q. This being served upon you, I supposo you carried it
to your counsel ?
A. My impression is that that would bo tho courso that
would bo taken.
Q. On the 18th page of this bill wo find tho following
words:
(Defendant’s counsel objects to Mr. Butlor reading
1069 any of tho words of tho bill. Thoro is nothing from
Mr. Orton to show that ho received it at any particular
Mr. Butler : We And a suit commenced by a bill which
was sworn to on tho 8th day of Octobor. Wo And tho
fact of a notice dated on tho 13th of October, 1874, whioh
recites that such a bill has been filed, nnd which is directed
to tho W.estcrn Union Telegraph Co. nnd which is pro¬
duced hero by them.
The Court: Does tho notico speak of tho bill as Aled ? 1070
Mr. Butler : As pending ; yes, sir. It is entitled in a case
nnd is directed to tho Western Union Telegrnph Co. among
others, and recites what lias been rend, nnd of courso it was
a notico which had for its purpose to notify thorn what tho
plaintiffs alaimed tho rights of George Harrington wore,
nnd to do that thoy sent the bill, whioh is admitted to have
been received at tho same time.
Mr. Lowrey : Nothing of tho sort.
■ Q. Whenever you did see them, did you sco them to¬
gether?
A. I don't romombor.
Q. Ploaso tax your memory and say whctlior, whon you
Arst saw them, you saw one nnd then saw tho other?
A. I linvo not tho slightest recollection on tho subject.
Until you called my attention to thorn, I had forgotten
that I had ovor seen thorn at all. Tho fact is that this auto¬
matic businoss was always in litigation. 1Q_2
Q. Never mind tlint. Do you moan to tell tho Court,
upon your oath, that you don’t know whether, whon you
®aw them you saw ono after tho other, whctlior they were
received at different times, or whothor you rocoivod them
togethor ?
A. I am on my oath all tho time, sir. I don’t remem¬
ber whether I received them separately or together, nor
when I received them.
By the Court:
1078
Q. Do you remember receiving them at all ?
A. I remember having seen them, and I think I saw
them in my office.
By Mr. Butler:
Q. You saw them in your oAico ?
A. I think so.
Q. How sure are you of that ?
I think I
1074 A. I cannot state in degrees how sure I am. I think I
saw them in my offico.
Q. That is your best reeolleotion ?
A. That is my best belief.
Q. What is your best recollection that you saw them in
your office 7
A. My bolicf is founded upon my reeolleotion.
Q. You saw them in your office. Did you know how
they came there at tho time?
A. I don’t remember that I stopped to considor that
1075 question or discuss it.
Q. Did you not know or believe that these two papers
wore sont to you as President of tho Wostorn Union Tele¬
graph Company to notify you of this suit?
ifr. Lowrey: I object to so much of tho question as re¬
lates to tho witness’ belief. Representing tho Western
Union Telegraph Company, wo are bound by his knowl¬
edge, and not by his belief.
1076 A- If 1 cver sa"’ l,lom I was President of tho West¬
ern Union Telegraph Company at tho time. I havo no
knowledge as to tho motives which prompted their being
sent other than those contained in tho papers themselves;
and have no belief other than what is contained in tho
papers.
Q. Do you not believe that they were delivered to you at
your office together?
A. My belief is that they wore not delivered to me at
all.
1077 Q- Th°y were sont into your . Dice?
A Yes, sont into my office.
Q. You do believe that, do you ?
A. I think they were, yes, sir.
Q. Do you not believe that these two papers were handed
into your office in the Western Union Telegraph Company’s
building together ?
A. I havo no belief on tho subject of their coming to¬
gether.
ft Have you any belief on tho subject of thoir coming
apart?
1078
A. I have.
Q. You believe that they enmo apart, or togotlior?
A. I have answered that question. I have no belief ns
to the manner in which they came.
Q- What is your belief on tho other branch ?
A. That they camo at all ?
Q. Yes.
A. I believo that they did.
Q. I ask you whether you believe that they came to¬
gether?
A. I have no knowledge on which to base a belief as to 1079
that. I have no reeolleotion about tho matter. Nothing is
fixed in my mind about it.
Q. When you got the pnpors did you look at them ?
A. I don't remember that.
Mr. Butler: I can prove that thoy wore loft there 'on the
80th of October. If it is necessary, before I finish tho ox-
]‘i aminntion of Mr. Orton, I should lilco to havo the privilege
of sanding for a witness to prove that foot.
!' The Court: If you desire to prove that notice was served 1080
upon tho Western Union Telegraph Company at a particu¬
lar date, I shall havo to require additional proof on that
subject before I permit tho pnpors to bo introduced.
. Q- Yon say they were handed to you somo timo in tho
fall of 1874— this bill?
A. I don't remember.
Q. This hill whioh you had in your hand, and assumed
to bo received inl874, states in tho third clnuse of it as fol-
1081
(Defendant's counsel objects to tho rending of tho bill and
to the cross-examination of this witness in reference to the
contents of the paper, whioh, so fnr ns appears by the testi¬
mony, the witness never rend, and which examination is for
tho purpose of seeking to charge the compnny, of whioh
this witness hnppons to bo President, with knowledge of the
* contents of tho paper.)
264
1082 The Court: You may show tho witness any paper, and
request him to road it and refresh his recollection, and
after having his recollection thus refreshed, you can repeat
tho question.
(Hands witness paper.)
Q. I wish you to begin and read botweon thoso two lineB
which I have marked.
A. I hnvo read it.
Q. Will you now stato, upon your oath, that you didn't
1088 hear of Mr. Harrington’s title to this invention prior to
1876?
A. I don't think I hnvo over been asked that question.
Q. Never mind wlmt you havo been asked ; wo will not
discuss that matter now. Will you now stato, upon your
oath, that you didn't know of Mr; Harrington’s titlo, or of
his claim of title, to thoso inventions prior to 1876 ?
A. I do.
Q. Or had no notice of it?
A. I had no notice of it, unloss you call this a notice
1084 wbioh I do not romomber to havo road.
Q. You say you sent it to your counsel ?
A. Probably I did ; I don’t romomber that fact.
Q. Did you over consult with your counsol about it?
A. Not to my recollection.
Q. Have you any dofeot of memory that you know of?
A. Not that I am aware of.
Q. You romombor tho ordinary affairs of life, don’t you?
A. I never havo gone into a fine consideration of that
question.
1086 Q- “over found forgetfulness in your memory ?
A. Among tho things that I have been charged with I
don t know whether that is one or not; I suppose I havo,
ordinarily, a good memory ; tho difficulty nhout this caso is '
that it is not possible, I think, for any one memory to ro-
ofa year" PaSSeS thr0Ugh my hoad and handa in tho course
Mr. Sutler: I will endeavor to prove tho fact in relation .
otonffia?n„1m t 1 wUl re3Umo my ^oss-examination 1086
on that point I will now pass upon another matter.
duSd )Ut° b°°k °f tUe WCS‘ern 17111011 Telo^aPl1 Co. Pro-
d/r. Sutler: I want tho record to go in evidence as it
stands. On page 448 is recorded tho meeting of tho 80th
of Decombor, 1874, of tho executive committee. That con¬
tains nothing about duplex or quadruples
The Witness: Nothing whatever.
1087
Mr. Sutler: Tlion, on page 449, thoro is a meeting of tho
executive committee of January 13th, 1876, in which there
is nothing that I see about this subject. Then, on tho next I
page is 460, which is a mooting on January lltli, 1876, but
lalh in8 n" ,th? She0t nftcr tho mootinS Of January
18t h, in which wo find the following: “ On motion, tho sub
jeot of purchasing tho quadruplox patont was referred to a I
commutoo, consisting of tho President and Messrs. Green \
and Mumrord, with power. On motion, adjourned." Tho i08f
meeting of the 11th is recorded on pago 460, and tho moot- 10°
mg of the 18th is recorded on pago 440. That is all there
was on that day. Thou, at the meeting of the 18th ofJanu-
r "l'ho President mado a statement to
the committee in. reference to negotiations for tho purchase
of tho quadruplox patent" That seems to have been all
«ia was done on that day. At tho meeting of tho com-
mittee on the 20th of January it is recorded : “Tho Presi¬
dent read his acceptance of tho terms proposed by Messrs
Edison and Prescott for tho sale of tho quadruplox patent 10a9
On motion, adjourned." Nothing more. 1089
The Witness : No, sir.
Q. Is there anything about thoso patents in this book
before Jnnumy 11th ?
A. Nothing that I can find.
Q. Havo you examined thorn for that purposo?
- A. X have had them examined for that purposo.
Jersey bill ? ‘n° ans"rer °f Mr. Edison to that New
rend it again! r°fflember>' Possibly I could tell if I ,voro to
q | ha™ “MiS the subjeSeaS° i0°k Ut that
A w 3Un^ed uP°n recollection ? '
tr 4” SAfac!-
-■&SHSS;.t;A0=
t.t o lo certain inventions. Tb' v I,lm- chi™«
^ regard, on '«J ««2dtoiJ h^Stf fa
801110 or other You »«« fix the Jaffa
1098 (Showing witness paper.)
tyyo^omp^'up^ fhooTr “ ‘hia answor ‘ho bill
ofhnWnc ^°^b*i°18W, tfyou'now ?°l1'00 b°mg served
havtng received that notice ? bave any memory i.
Sef1?0^ 'vhieh°bns ‘not bLT^00 involves tb°
°f°ie th0 Cow‘ fa evidence in “”d h not !
Ij’fi It does not affect my recollection. 1094
H : Tll<m did y°“ hrst see, or can you toll when you
h read this answer? J
■ A. No, sir, I cannot.
Q. About when ?
L A. Nor about when.
Q. Was it soon after it was made?
A. My impression on the subject, if you will allow it, is
, . that I never read ,t completely at all. I think I merely
•y.; saw lt an<3 glanced at it. J
f ' ' arose^ou'tkoro b<!t"'een Ed''3°n and HrirrinSton 1096
; fi (Same objection as before.)
(Objection overruled. Exception.)
■1
M- fuller ; I propose to ask if bo obsorvod whether the
word or was in this contract then sot out or not
| (Admitted. Exception.)
A. I have no memory on that subjeot
J Q. Whether it was or was not?
A. No, sir. 1096
Q. Please look at defendant’s Ex. No. 29 (handing wit-
"»”5I2, oXL“; w“" p*'““
The Court; You may ask him under what circumstances
and on what occasion it was given.
Q. I ask yon whether this release which you have hero, 1097
and which! have read to you, was a release in settlement 1097
ot that suit or under what circumstances it was given?
(Objected to.)
The Court : TI10 question involves something ns to the
contents of the paper. That papor speaks for itself. You
may show under what circumstances and on what occasion
it was given.
1098 Q. Wkit legal controversies were settled by this release?
a«seltt?e’d0ntb° ^ ****""* W**
iciitsssr ,ea to « -
«-2S^sr4;“*ct---N
37,e Comt: The objection is well takon.
ofiSrr1110 0ircUmStanC°3 ooncorninS the giving
■A. Mr. Edison had made overtures tons for cmnlovnumi
. p'™
1100
eoivo an answer which I do not want 1
Q. Do you know whether there entered into this release
the?eons, deration of the settlement of the N^ Jemey
(Objeotod to. Objeotion sustained. Exception.)
U01 at il ornot? *”* '*** N°W Jore<* suit ™s settled
A I do not
Q. Did you have anything to do with gottinc ud thi, ™
lease, or with tho negotiations which led to it? S P
son and AIV t"S Pap01/ a"d lwd 00nferenecs with Mr. Edi-
son nncl Air. Lowrcy about that
Q. I will ask you whether the New Jersey suit or ife set-
is papor, Exhibit No. SO ?
(Objected to, on the ground that the papor sums up all
negotiations and expresses all that went before.) P '
Pnp°r r°f0rs *° eortain controvoisies or
£1 W Tr*0 Sh0W ‘° wlmt controversies and
litigations it refers. It does not state on its (nm nn,i „ •
• denco in regard to that is admissible, if I can only got tho
counsel to put his question in such a form that ho' wd/ not nna
be subjected to criticism upon the other side. To avoid U°3
5 "Ss ‘WV° rSge3tol t mt 110 Mk th0 witness to what litiga
; stood fmmTVOrS,OS f003 thi,S pap0r rofor- 1 >*nve under-
no obicZn m °°T Upon.tho ot,lor si(1° «>at there will be
no objection to such a question.
Q; In that papor there are used tho words “ local conlro
whan ^°tWC,en Ed-SOn aDd tbo Westorn Union. To
what legal controversies do they refer to ?
A. They refer to whatever was ponding, I suppose
Q. Behind enough to tell mo what was pondfne. 1101
A I believe the New Jersey suit was.
Q. Did it rofer to all that were pondiug?
A That is a question of construction, it seems to mo.
[| neSiST “Dy Wri“0n PaP°r 'Vb!0b makes a pMt °f ' *•»
I | PnP°r executed, according 1lnK
I t0 “Pression now-, at tho samo time this was. 1106
1,1 Q. Whore is that?
islIfTrVV'3" tb0 “usl°dy of the secretary; that
wouId noUet ml ** ab°Ut B ,itU# wWh Vh -d you
dcEtoSfi? th0 paper- Counsel for defbndants
* touted at tl,0 safflflt'-"18 °f t,lk
romombranoo ? mo as th,s, according to your
^ 1 oannot remember positively.
■W,e Witness: I will *„n ,,
“ t0U tlle ^ory frankly.
i^^Por if I
lit rpor about? “sk you 'Wmt
sou-abouthissTrtTool”150114 ‘b° ““Payment of Mr. Edi.
1108 J/r. Sutler • T «#» *
side for that paper °a Upon tbo counsel upon the other
** ^
■&>'• -Dickerson: We
t~i«. n,.aw
”* «w-
1109 ifr. Xowrey ; ye3.
?eo‘t° the contents of that n j
' dn substance ? PaPer M you recollect it ?
giVA°. ™ contents of t?‘ ab°'lt-' ««r I want you to J
you the substanc?"601 What tbe conloats were; X can giyo j
U Jfr. Sutler : Tell your counsel.
1 soifrcSTo tl11 T i“ °°ntra0t exccuted with Mr- Edi-
/ ; ? ,°Ttl10 development of wlmt is called « acous
b ‘clcgiaph." I think the execution of these two ™
B: rnk.S tantmlly C0,,0Urrent; *0 negotiations were l
*•' ’ 1111
I fort' UWtV •' 1 re°OgniZ0 ft° Wer at-onc°. a"d will send
r 2 “n3idorntion P“id for that release ?
i ‘ ’ Q. Yes.y ’ dld W° elve bim any money l
'.I A. I think we did not.
fef 2 To tl0U ,k“?'V 7llethor y°u did or not ?
know. company examined, and lot you
2 TZtf '"Z thnt y°u Pa'd him any money ?
J- o l k,T,.th!lt we Paid him any. 7
t J „ou d°n t bohovo that you did ? ^
j paW £V° °Wed ““ anj,thiDS at tba «me we probably
! i.i2any°mont?Ut ™ didi did ** ™ ^
• O trhinS’ Zmy know]cdgc-
given hi,tonTddkrtor°nthes00nCOrn0t1’ ^ y°“ ever
"nsi:
1114 .«££.“ “ “ ““ “ '• ■
-a
rupfo'c'nnd’dm l^X''ibit ? “toquS
orn Union ? P ' Deg°tmtod ‘° be Passcd «» West-
U15 self°bj00t0d ‘° °“ tb° 610011(1 “““ th0 PaP°r sP°“k= for it-
raioo°d=F ^a™«K rrs
s passed. You may show the contents of the other pa-
1110 „±I,d0Sir° t°.ask *ou whether, in the course of this
(Objected to. Objection sustained. Exception.)
panCtSo\tr7°TrUrkn0"'ICdf0' th° Moslem Union Com-
JlexY °“ anyth'ng &r duplex and du-
plex? ‘ anym,ne “r quadruplox and du-
1117 (Objected to as immaterial.)
...w.r'tix-1”'6'""1'""'- obj'“»
thoi6,0007 auadrup,exa
A. No, sir, not directly on that account
I Q. Have you indirectly ?
I n £sll°,Uld Say W0 1,ad a Pretty largo sum. 1118
1$ How ?
\ Lt ZEST* 10 — »»- p*«« i* ...
/ • ?• S“V8 10 B7' y0a, havo Paid llis Iftw expenses?
a. Wo have advanced the money • yes sir *
Q- And charged it to him ? ’
h me
bee.n ^ account Of quadruplox and duplex? ^
A. I don t know ; I don’t koop the books,
j Q. Do you know of one ?
S A. I do not
foHt except tho^sJoooT ^P0"803’ you ^,nvo Pn'd -thing
! t bro"d °nou6L
| A. Yes.
I ^ ThaUs all.0 eSp0DSCS °f ‘b° tU1° and Patonta? 1U°
4bS™cr » >-“% >» w
,4.;.rid'"" ‘"V“ “ W M-. pretty
Q. How many quadruplox circuits have you running?
A. I cannot toll from memory. S 7
Q. About how many ?
a£C:^IXteODOUtOP:l,ON- Y°rk office. 1121
A I nl i n,VCS mo a very smttll proportion. 1121
A. I cannot toll you, becauso this does not comn
my personal knowledge. I do not tnl-„ „„ como within
working of the circuits in detail “^zanco of the
Q. I wish you to give me an answer ns nearly „s you can
ns to bow many quadruplox you arc using in nlf ?
met guess rkyiltb°inf0rmali0n doflnito&. but ‘his in
“ guess wot k, i can asoortain.
Q. Will you give mo that information ?
274
275
1122 A. Certainly, I will give it to you exactly. I will send
a memorandum which will cover the case and which you
may tako as my answer to the question.
Q. Have you ever staled in substance, I do not want
words now, that Prescott, being the electrician of tho eom-
pany, you had tho nunns of compelling, without payment,
a transfer of his interest?
A. Never.
Q. Or anything liko that?
1128 A. Never anything like that. I desire to mako my
answer ns broad ns language eanframo it.
Q Did you not know that tho counsel for Mr. Prescott,
before tho Secretary of the Interior, disclaimed that tho
Western Union had any title to these inventions in 1875?
(Objeoted to on tho ground that tho counsel for Mr.
Prescott cannot bind tho Western Union Company. Ob¬
jection sustained.)
1124 Q- Did you rcceivo n letter from Mr. Edison before you
wont to Europe ?
A. In 1874?
A. Not to my reoollootion.
Q. Have you looked to sec?
A. I huvo looked to find every sornp of paper writtou bv
Mr. Edison in our office. J
Q. Do you remember Mr. Miller bringing you one ?
A. I do not.
1126 Q- Did you learn from Mr. Eckert or either of them
that they had been over to see tho quadruples work ? ’
A. I don’t remember that I did ; thoy may have men¬
tioned the matter to me. I hnvo no recollection of it.
Q. You hnvo no remembrance ?
A. No j if they should say that they did I should un¬
doubtedly believe it.
\r °nf1Q D0'v t0 l*10 IniUtor °f your eommuuieation
with Mr. Reiff. You had an interview with him at Mr.
Barney's office ?
A. Yes.
Q. You asked Mr. Barney to send for him? 1126
A. I think I expressed a desire to moot Mr. Roiff and to
havo an interview with him. I don’t remember oxactly
how it was, but Mr. Barney did so and there was an inter¬
view at his office.
Q. You met there?
A. Yes.
Q. I desire to ask you to toll mo what was said in winch
Mr. Harrington’s nnmo onme in in that interview?
A. I think I told Mr. Roiff of tho interview I had had
witli Mr. Davidgo, and that Mr. Davidgo produced to mo 1127
authority from Mr. Harrington to soli eleven-twentieths of
tho automatic ; I am quite positive I told Mr. Reiff that.
Q. Was there any otlior place where Mr. Harrington’s
name came in?
A. I don’t recollect any at this moment.
Q. Didn’t Mr. Roiff say to you that Mr. Harrington owned
Edison’s inventions?
A. I don’t remember tho phrases that passed betweon us.
Q. Never mind tho phrases; did ho say that to you in
substance? 1128
A. Ho did not, or what that implies; Mr. Reiff never
said to mo what carried to my mind the conviction that ho
set up any claim, on behalf of Mr. Harrington, for anything
but tho automatic patents ; we were talking about tho au¬
tomatic.
Q. Did Mr. Roiff toll you that Mr. Harrington owned tho
nntomatio ?
A. Ho told mo that Harrington held them, but ho didn’t
toll mo that ho owned them ; I understood him that thoy
wore held on behalf of tho Automatic Company. 1129
Q. They wore held amongst them in some way ?
A. Yes.
Q. Through Harrington ?
A. Some explanation was mado as to that.
Q. Now pass to tho next interview ; you enmo in on tho
16th and said, "let’s to business?"
A. Yes.
Q. You then said, did you not, “I don’t want tho Na¬
tional wire; I don’t value that; I don’t want tho Baino
1181 t
1180 and Littlo systoms ; I don’t value thorn ; what I do want is
Edison’s patent;’’ did you not?
A. No, sir ; the conversation didn’t occur in that order.
Q. You think it did not?
A. No, sir.
Q. State in what order it did occur?
A. My improssion is -
Q. Givo your memory, if you please ?
A. When I say that I mean my memory. My best re¬
collection oti tho subject is that I was pressing for an nnswor
1 to my question ns to price, and that I thought the figures
named by Mr. Davidge
Q. I didn’t nsk you whnt you thought. I asked you to
stato what you said ?
A. Mr. Barnoy (that is my recollection) or Mr. Roiff, I
cannot roinembor positively which, asked mo, when I was
pressing for a price, whether I wantod tho price to covor tho
whole thing or not, and I said no, thnt I didn’t care any¬
thing about tho National Tolograph ; it was a lino of bean
poles with ouo wiro; I didn’t care anything about tho
1182 Littlo patents in view of tho discussion that I had with Mr.
Rieff, and of his explanation wherein ho had said that they
woro worth nothing.
Q. Go on and tell whnt was stated, if you plcnso?
A. I stated that I wanted thorn to givo mo a prieo for
tho Edison pntonts for tho automatic.
Q. You moan a prico for Edison's patents for tho auto-
matio?
A. Thnt is tho substanco.
Q. Did you put in tho word automatic?
1188 A. It was all about automatic; I cannot toll you how
many times I repeated tho word ; I don’t remember whether
it was in that connection or not.
Q. But your moaning was to ask for a prico for tho auto¬
matic alone ?
A. Yes.
Q. Edison’s inventions for tho automatio ?
A. Edison’s inventions for the automatic.
Q. Whoever hold them ?
b A- '1,lier0 '™3 no discussion in that respect that I romom-
I
It
Q. ’Whoever hold them you wanted them ? 1184
A. Edison’s inventions of tho automatic would linvo to
bo convoyed from Harrington instead of from tho Auto-
mull o Company, ns tho title then stood, as I understood.
Thnt was all the connection that Mr. Harrington had with
the conversation that I remember.
Q. Now, then, did you, after Mr. Roiff left, turn to Mr
Barney and ask his advice ns to what offer you ou-ht to
mnko? °
A. I did not; I never took nnybodys advice in regard
to whnt offer I should mnko in my life. 1185
Q. Did you not sny to him in substance “ whnt shall I
do ; whnt would you ndviso mo to offor ?’’
A. No, sir.
Q. Didn’t ho in reply to that say, “I hnvo no authority
to mnko any offer, but would ndviso you to oiler so and
so ?"
A. I think thnt it came in tho form of a suggestion from
Mr. Barnoy to tho offcct that a certain proposition made by
mo would bo favorably entertained. My nnswor was, 11 don’t
go any furthor Mr. Barnoy, good morning." 1130
Q. Wo hnvon’tgot to tho good morning yet. You told
us thnt you didn’t nsk .Mr. Barney to ndviso you ?
A. No, I did not.
Q. Are you suro about that ?
A. I am certain.
Q. Haven’t you within a fortnight conversed with Mr.
Barnoy upon tho subject?
A. I have.
Q. Now, sir, in nnswor to your question, didn’t Mr.
Barney say, “ Whilo I hnvo no authority to make any offer, 1137
I would suggest that you mnko an oiler of so and so ?
A. No, you now refer to my recent conversation with
Mr. Barney.
Q. No, sir, I refer to tho time when you woro there on tho
10th of June.
A. Ihavo just answored that question. Do you want
mo to givo the suggestion I spoke of in detail ?
Q. Yes.
1138 A. Mr. Barney says ™1ifnn“ors''sl mae“ual' to be
offer bo made," running over Ins h a > „ of $500,000 *
paid to so and so, an so i inuo > aisoussion bas been J
in casb." The proposition during J
SO much for cash -
A. That i's'ivbaT "said lam^eUmg h« — ^
•
right away. •
1189 (i What did [ bo say ? ^ the amount of cash J
V d°n i rsSSOOOOO; after lie bad commenced to
that bo named was $600, ouu, fullllor) good morn-
•ngfitlsTseless to'di’scuss it,” and that was the end of the
4.VSn the offer which he proposed was stopped in the
!L stopped aetually before a eomplete offer was ^
xuo-tw
h. $500,000 »M1- » «opl
"t '“'“l “ buJr “
Tiis inventions for the automatic at that time, because you 1142
believed that you had the quadruplex and duplex by a
proper title.
A. I never said anything of the kind; nothing of the
\ sort was said by anybody.
),\ Q You “'«> ‘*‘a‘ 30u didn’t care for Little; that you
i'i “ldn \mro for Baino i ‘hat you didn’t care for the National
line ; but you wanted a price for Edison’s automatic invou-
; tions; Now> 1 "slc y°» Whether the reason you only wanted
' a price for Edison’s automatic inventions was because, in
% jowovru mind, you believed that you bad the quadruplex 1148
. and duplex.
hx A. Tho two subjects woro not connected. There was
) nothing suggested about quadruplex and duplox in that
;Sj connection.
if Q. This was tho 18th of June. Didn't Mr. Edison come
t0 3'0U ‘o borrow money beforo tho 19th, beforo ho went
away ?
?;| A" h think I mndo an arrangement by which ho cot
$5,000 on tlio 80th, boforo ho wont nwny.
Q. The $10,000 I nin talking about? 1144
A. I cannot recollect distinctly whether Mr. Edison ap¬
plied to mo in person for that, but somebody spoko to mein
Mr. Edison's bolinlf.
Q. Didn’t you toll us tlio other day that Mr. Edison said
to you that ho had a chattel mortgage etc., nnd wanted to
hypothecate his interest in automatic ?
A. That conversation was on tlio 8th or 9th of July.
| Q' Dill,1’‘ yo« thou say to us that you said “I won’t giro
> $10,000 for all these traps?’’ wont give
A. Yes. 1146
Q. Meaning all of his automatic inventions ?
A. That is what I meant.
' Q- Although they might possibly sell for that?
‘ A. Might bo good collateral security for that,
f 9" 1 dcsiro now to ask y°u "hout the letter of Mr. Eoill
j which has boon called tho anonymous letter. Did you
j kn°w, from tlio handwriting, or otherwise, from whom it
came?
j A. I had not tho slightest idea.
Q. Did you take it to bo a blackmailing letter when you
received it?
A. I don't know that any sucli idea ontored my mind. I
don’t remember wliat passed through my mind at the time.
I think I took it as n hint
Q. For what?
A. That it would be worth while to reopen relations with
Hr. Eoiff.
Mr. Butler: Mr. Lowrey, will you givo mo those letters
of Mr. Orton’s which you identified and produced here?
Mr. Lowrey: No, sir; I deelino to produco them.
1148
1140
Q. You opened a correspondence with him boforo and
since?
A. No, sir.
Q. But ho has with you ?
A. Yes.
Q. You two liavo boon corresponding?
A. To some extent
Q. By letter?
A. Occasionally.
Q. You havo boon making overtures ?
A. No, sir.
Q. Or propositions?
A. No, sir.
Q. To buy his interest in the quadruplox?
A. The overtures all came from tho othor way, and tho
propositions all enmo from tho othor way, with perhaps a
modification of ono of his.
(Eeecss.)
After Becess.
Q. I desire to ask you but a single question more, and
that is, whether Mr. Beift did not say to you that ho could
not make a price at that time, on account of some obliga¬
tions ho had with othor pcoplo ?
A. I don’t think Mr. Boiff did mnko a price. I don’t ro'’ 1 1
member what was said about it.
Q. Have you such a momory that you can toll wliethor
Mr. Boiff said that or not ?
. A. ^I don’t remember of his saying it Ho may havo
Q. When did you first learn of the agreement of August
19th between Mr. Prescott and Mr. Edison?
A. I havo no recollection concerning tho matter of Au¬
gust 18th, except of hearing that tho agreement of July had
been made over again for somo informality. 1151
Q. About tho timo it wns done ? 110i'
A. Probably. It is a more assumption.
Q. That is all you heard about it ?
A. That is all I recollect about it. Tho making of it
over was nothing with which I had to do.
Q. I want to ask you further, whotlior you did not got
from Mr. Mutnford, at Chicago, in January, a notice that
Mr. Edison wns soiling out, or words to that effect— somo
notioo ?
Q. You told us you got somo telegrams upon somo sub- H62
A. I havo examined tho records of Mr. Mutnford, nnd
the files of tho office, with tlfo view of developing, nnd I find
nothing on the subject.
Q. And of your momory you don’t know ?
A. Of my momory I do not recall anything; loan only
recall tho fact that what brought mo homo was tho state of
my health.
Q. Had you, in any way, consulted with your directors
or your executive ooinmittoo, about quadruplox, prior to tho , . r„
10th of December, 1874, that you remember? 1 163
A. If you moan by consultation, whether wo had discus-
sea tho subject from time to time _
Q. Whether you had reported to them ?
A. I had.
Q. In a meeting?
A. In frequent meetings.
Q. But nothing that wont on tho record ?
1164 A. No, sir? tlio records represent but littlo o£ wlittt tran¬
spires at tho meetings.
Q. Why I ashed was, I find in one of the records that
you bring me, that it is stated that you had reported to
A. Yes, sir.
(Mr. Lowroy here handed Gen. Butler an agreement which
tho latter had asked for. It was an agreement between tho
Western Union Tel. Co. and Mr. Edison, of December,
1166 1873.)
Tho witness stated that it formed a part of a transaction
in which nnothor paper was drawn. Ho snid :
"My impression is that tho two papers woro made to¬
gether.”
Q. Was not this a part of tho same transaction ns the
rolcnso ?
A. They woro botli mndo substantially at tho same time ;
1166 ^ d>is connection that the whole negotiation
was carried on between Mr. Edison and Mr. lowroy, and I
approved and ratified what had boon agreed upon between
the two gentlemen, after a good deal of conference and
negotiation,
Q. Did you get a messago while you wore at Chicago,
during tho summer of 1874. from Mr. Mum ford or Mr.
Prescott, that Mr. Harrington claimed tho quadruples ?
A. I hnvo no recollection of any such message.
Q. Hnvo you such a recollection that you can say you did
1167 not?
A. I think I can answer that question ; that I did not, be¬
cause my mind was noycr charged with any such impression
from any source.
Rc-Mnct examination by Mr. Dickerson :
nr ^.7 °" 'mV0 'lcon nsl'0ll ebout a correspondence between
Mr. Belli and yourself, additional to that which is contained
m tho so-called anonymous letters, and whatever letters
Horn 1168
A. 1 think you misunderstood me.
Q. Lot us hnvo it right?
. A- ,Wo liav0 ,latl correspondence ; I think a larger num¬
ber of communications hnvo passed from Mr.Boiff tome
than front me to him, but doubtless I have written to him.
Q- Have you those letters hero or some of thorn ?
A. I have somo of them.
Q. I will pass that subject for tho present. You were ‘
asked about tho number of circuits, and you snid you would
got your information from your superintendent. IIow many 1150
= q,!z£ r tho ]ine “ to-
A. The last information is from tho assistant electrician
who has immediate chnrgo of this subjeot Ho reports
that there are 48 c.rouits at work to-day, with 06 sets of an-
parntus. 1
■■i „ Q- IVTnr,1°tt0r t0 the Nostmnstor-Gonoral, in print, I
| find on tho 10th page, this statement: “Tho next notable
i ftatomont ‘lie report relates to what is therein styled,
-5 the automatic or fast system !' ” and I see that those words 11C0
1 LooZ^tZ 7St6mC pUt in <lu°tati°a
: -LiOok at it, and state from what that is quoted ?
A. I don’t romember, sir.
Q. I find also, what is therein styled “in tho report”
u lint report is roforrod to in tlint Inngungo ?
; 'fl'c roport of tho Postmnstor-Gonoral.
,p° which this letter purports to relate ns a
: j A. Yes, sir. 11B1
\ Is J1 truo tllnt i1 styled in that roport to tho Post-
: roaster- General, the automatic or fast system.
- (Objected to. Objection sustained.)
O' Ia that n truo statement of tlio fact ns you there have
•if. 1 ca,lll0t answor tlint question from my reo Election of
the Postmastor-Goncrars report.
1162 Q. I also find on that samo page: “It is not a novelty.
There lies besido me, as I write, a pamphlet bearing date,
December 1st, 1869, throughout whoso twenty-two pages the
praises of what it had then achiovcd aro glowingly sot forth."
Did you have such a pamphlet ns that, sir ?
A. Yes, sir.
Q. When did you first know of that pamphlet?
A. I first saw that pamphlet in Liverpool, in December,
1869.
Q. Have you that pamphlet with you?
1163 A. This is a copy of the pamphlet. (Producing it)
(Pamphlet ottered in evidence. Objected to on the ground
that it is not in answer to anything brought out on the
cross-examination.)
(Objeotion sustained.)
Q. You wero naked by the learned counsol: " You thou
bolioved that tho automatic was at that time, 1878, an on-
1104 tiroly perfected and complotod nil’air," and you answered,
" Woll, from tho mnnnor it was treated by those connected
with it" — whnt did you mean by that answer?
(Objected to j objection overruled ; exception taken by
pinintills.)
A. I moan that it wns presented to tho public ns a com¬
pleted thing ready to enter upon tho work for which it was
designed.
Q. How presented to tho public ?
1165 A. By soliciting custom, and through representations in
tho nowspnpors.
(Answer objected to by Mr. Butler.)
Mr. Dickerson; I desire to ask tho witness in gcnoral how
fully ho was informed and upon whnt ho wns rolying and
noting?
(Objeotion sustained.)
| J Q. You wore askod, "When you wero going into this 1166
■ ; transaction of so much importaneo " (I am using tho Inn-
i gnngo of tho counsel), meaning your arrangement with Mr.
5 Edison for exploiting duplex telegraph ; “ why did you not
make inquiries further than those you did make, in relation
to his connection with anybody else, or in relation to his
obligations.” Will you state to tho Court how much im¬
portance you attached to that arrangement with Mr. Edison
at the time it was made?
A. It is difficult for mo to say how muoh importaneo I 1167
| attached to it. I did not attach much at that time.
Q. At tho timo you made that arrangement wns whnt is
• now popularly called qundruplox beforo you at all ?
A. No, sir, not at all. Perhaps I ought to add that tho
possibility of sending more messages than two had been
discussed tho year before with Mr. Stearns.
Q. That was a possibility wbioh was. discussed?
A. Yes, Bir.
Q. You wero asked about the letter of tho 26th of Jan-
; nary from Mr. Edison to you or to tho Western Union Tel- 1168
: egrnph Co., about tho dato of which tliero wns somo ques-
tion, tho original letter itself having been temporarily, if
: not perpetually, lost in tho progress of this ease. Do you
:■ remember tho date of that letter?
A. I do not from recollection.
Q. Do you remember tho timo when it wns received, or
tho date of the post mark nmlor which it was received— tho
r Washington lotter of Edison, dated and post-mnrked Wasli-
! ington and Now York 1
A. I linvo a recollection about that j I answered your
. question supposing it roluted to another j my rccollcc- nog
; tion is that that lottor wns dated tho 26th of January, and
:'j that it wns post-marked dated Washington, 20th of Jnu-
j nary, and post-mnrked Now York city, February 8th or 9th ;
■:{ it might linvo been Washington, tho 26tl> ; it is within a
; dny or two of those dates.
\ Q. You wero nsked whether you gavo any instructions to
,:f your counsel in rospect to replying to that letter, and you
,| said at tho time that you did not recollect any instructions.
: Have you sinco that timo refreshed your moiuory on tho
280
1170 subject, and nro you now able to answer that question bet¬
ter than you (lid thou ?
A. I Iiave been shown the letter book of Messrs. Porter-
Lowrcy, Soren A Stone, containing a letter addressed to
Mr. Edison, under date of February Dili, 1876, and although
I have not compared this copy with the press copy in the
wUhsomo' enre"' aSSUIe‘1 it is n c,,«' ’ 1 lu,vo rend the copy
Q. Does that refresh your niotnoiy in respect to the state,
com.sel°? lnStr"Ulio,1S wl,Wl yolt 111 111111 time made to your
1171 T A.Tt rofr“,10.s ">.V tnenory generally ns to the fact that
Iliad consultation with Mr. Lowroy on tho subject, ami
made statements to him that r deemed important ibr him to
consider in order to adviso, as tho result of whieli this let-
wa?sentVrltte" "'ith my k"0"'lui18° 1111(1 »l>l>rovnl before it
Q. Cnn you now tell us what thoso Instructions woro 1
in this lettelf ‘ H,° <,0t',ilS ns tIluy »» ft»rth
1172 Exhibit'd: ‘) * ‘ ° 10 00 rMl 1 1 *Iod Delta dints
Q. \ou wore nskod tho question whether Mr Eiliam,
made any exhibit, in accordance with tho suggestion eon
^ %‘tn M, Miller, wS*C
no exhibit was Stojouf tlliS CI,S°’ ^ y°" S',i“ tlmt
oftot <l0"’fc ”mmb0r 'VU'lt 1 rt is tmo ns » matter
lm nt, wo™ *nI"w““»‘ 1 “» «r I tan,
*"• E"ta«. « ««. ....
a. Very soon after that.
Q* aou say a sudden departure ?
was gone'11'''1'" ““ 1 d,d "0t kl1™ >■« "-going until ]l0
us going ?
1174
[: < Q. You lind no warning that ho
: j A. None nt all.
Q. Do you know anything about tlmt lej it c neon-
^sequence ol which you made the remark “sudden” Was
'it sudden in respect to you, or sudden in itself 1 ’ .
'm,V0. a. g*"0"11 “ndurstumling of tho causes that led
to Ldisoi i s trip to Europe nt tlmt time, derived both from
gcntlomon connected with tho British tele-
-grapli on the other side.
, Q. Mr. Edison stated tho matter to you f
; A. Tcs, sir; after his return.
;; Q. What wns iti
Lu^witM?1ntV!00tlUaS!0'1 -t0 ulmrg0 myniindpnrtiou- 1175
hul} \uth it, and I can only givo a very brief substance.
f!| m Court- 1 Bio briofer tho bettor.
:.1 A. A proposition had been nmdo _
, | Q. You are stating Edison’s statement to you 7
j Al 1 11111 H‘llti"S lllu substanco of it. A proposition had
'If tho 'Turn,1 r1"'1’’ Soll,,111110I'o> 111111 11 the owners
in Lf, , V°llI,lc°Wover 1,1010 111111 make a do-
Z Z S0,"° 0n'Ut!t’ so"'u mlvn,,tngo would accrue
f l110"1/ (Tlml «•»» the idea of it. Edison wns called upon 1176
I'uudorst ''u'0? '11"1 nmko tllis <It,1,,n'|stration, which,
BUCCessfuliy 8,ly’ 1,0 <lhl dlm«lll«M. 111111 Quito
Q. That wns tho suddoness of his departure f
: A. \es, sir ; that was tho occasion.
Mr. Muller: Who asked him to go over*
to represent tho ownors of tho
■ A. I understood ho
automatic.
; Mr- Butlcr f At tho request of whom 1
: A. I don’t think lie told mo who requested him.
i Q. You mentioned a nnmo 1
• A' °‘! 1 !l1 11,0 invitation of Mr. Scudamore,
■Q. AVlio is ho?
gn^hH°'Va8 “ 0l,“re° Ut tIl“t timo of 11,0 [British Tele-
1178 Q- N- wns an exhibition to the British Telegraph ! ||
A. As I understood it. ||
Q. Youjilso spoke of another conversation with Mr. Edi- ||
son about tlio end of Dccombur, 1871, xvliicli you said might M
have been upon the same day as that on which ho handed .1
you his proposition, or it might ha vo been on tlio subse- !
quont day, but yon wore not permitted to stnto that con- f 1
versation ; will you be good enough to recall it ? j
(Objected to.) i f
1170 ®1011 J'ou nsked t° do it, and you did not do it t|
Give the conversation. ; j
(Objected to, and question modified ns follows) :
Q. Be good enough to toll the conversation at my solici- i (
tntion. j-|
A. You refer to the occasion in which I snid n roforcnco f
had been made to rnilrond signals 1 fi
Q. Yes, sir. |
A. I thialc I snid in that connection that whatever rccol- ■
1180 lection I had wns obtained from rending Edison’s oxami- f
nation, which reminded mo that I had probably had another |
interview with him, and made that remark on that occa- f
sion, otherwise than tlds roforoncoto thero being something f
to lie dono in tlio future in relation to tlio development of iff
railroad signals. I don’t remember that thoro wns any •
other conversation with Edison at nil.
The Court i I think the witness so stated before.
A. Wlmt I said wns, that I could oxplnin it, which I was :•
1181 not allowed to do.
Q. Go on with the explanation. %
(Objected to.)
The Court : If thoro is any possibility of misconstruction ' !
tlio witness can answer. ■
The milieus .- I will mnko
mem, and I will not touch
a very brief preliminary stnto- j |
on tlio other subject unless
counsol agreo upon it. (Iniieral Butler asked mo if Mr. use
Edison, at a cortuiu Interview, did not apply for money, and
I said ho did not, anil that no application laid been made
to me. It was in that connection that 1 said 1 could ox¬
plnin all that, there lining something about it that on the
papers does not seoni to lie clear. Now, if 1 am permitted
to muko that explanation, I can make it in a moment.
(Objected to. Excluded.)
Q. You woro nsked why you wanted an offer from Mr,
Boilf, or Mr. Keiffand Mr. Barney, at tlio timo of tlio con- 1183
versation which you had with them on the 10th and 17th
of dune. I would now ask you to oxplnin, if you did want
an oiler, why it was ?
A. I do not remembor that I have been asked that ques¬
tion.
Q. Then I will ask you the question : If you did want
the offer, what was the object that you had in asking fornu
offer at that time ?
(Objected to. Objection sustained.)
Q. In tlio month of Ootobor, 187-1, to which your atton- nsi
tion has been called, did you know Sir. Craig, who is the
plaintiff in tlio notion about wliiuli some pnpors have boon
presented hero ?
A. I know Sir. Craig, and have known him for a great
many years; I. don’t know what relations ho sustains to
litigated cases.
Q. Did you at that timohavo any business relations with
Sir. Craig when this notice is dated; I think it is dated on
the 13th of October, 187-1?
A. I cannot speak dolinitoly ns to the 13th of October,
nor, indeed, as to tlio month of October; but during tlio ngj
summer of 1874, beginning, I think, ill July, I had a good
deal of negotiation with Craig.
Q. On what subject ?
(Sir. Butlor objeotod to any negotiation with Sir. Craig.)
Mr. Dickerson .- A notico has been presented to Mr. Orton
87
1186 in a certain suit by Mr. Oraig ami nnotliot’ anil against
Harrington anil tho Automatic) Company, which notice was
served, as they say, and propose to prove, on tho Western
Union Telegraph Company. Tho object of tho presenta¬
tion of that notice, I presume, is to show that a claim was
set up by somebody to this duplex and qnadrnplcx. by
virtue of tho papers or agreement, or whntovcr tlioy mny
bo in that suit. I proposo to show by this witness that at
that time Mr, Craig was trying to sell automatic to tho
Western Union Telegraph Company, as wo already liuvo
shown that Harrington was by Mr. Daviilge, and ns wo
1187 think wo havo shown that Mr. Eoiff was, by his anonymous
letter and other contrivances, trying to get tho Westorn
Union Telegraph Company to buy. That fact explains
why it was that tlint notico was served on tho Western
Union Company.
l'he Court i It mny bo rclovnnt when any such notico is
shown, but it is not yet beforo tho Court. It will bo tiino
enough to consider tho effect of it thou, and probably tlio
effect mny bo modified by tho surrounding circumstances.
1188 Mr. Sutler : Do you admit that tho notico was served ?
Mi'. Dickerson : Wo do not admit it was served. Wo will
wnivo tho subjoot, however, until tho witness on tho ques¬
tion of notico has boon examined-
(Beforo tho calling of tho witness tho Court adjourned
until to-morrow.)
Hearing Resumed.
May ‘kith, 1877.
indirect-examination of Mr. Orton continued.
S!j Mr. Dickerson :
Q. You were asked yesterday from wlmt document you
quoted the words “automatic or fast system," and you said
you wore unable to answer. Have you since refreshed your
memory, and aro you now able to answer ?
A. I havo since lookod at the report of tho Postmaster 1190
I Gcnoral for tho year 1873.
. J (Mr, Butler objects to any ovidonco in regard to tho Post-
■ 1 mastor-Gonorai.)
■ j Q. That report was for tho fiscal year ending Juno 80th,
; 1878, was it not?
!•« It was for that fiscal year, I prosumo. It was made
' to Congress in December, 1878, and I supposo it was for
h tho fiscal year.
B Q- "Wore the words which you rofor to quoted from that 1191
U report?
g A. They were.
j ' Mr. Duller asks that ho bo permitted to suspend tho ro¬
ll cross-examination of Air. Orton for tho purposo of introduc-
; inS Mr. Homan, in ordor to prove tho sorvieo of notice
I upon tho Westorn Union Telegraph Company.
I De-directexamination of Mr. Orton resumed by Mr. Dick-
| orson . 1192
Q' In October, 187‘1, woro you in any negotiations or cor-
;; respomloneo with Mr. Oraig, tho plaintiff in this bill ?
!' A. I was in correspondence with Mr. Craig, I think, somo
i, t'mo "I J uly ; I don’t remember when it terminated, if at all ,
ft in 187-1.
| Q- What was tho subject of that correspondence or nogo-
| tintion?
| (Mr. Butlor objects to the question without tho corres.
| pondonco is produced. Admittod.)
| Court i Tlioy don't propose to provo tho corrcspond-
I “CO, but merely the fact that a correspondence in regard to a
| particular subject matter which was in progress between tho
| parties.
1 Q- You did havo a correspondence at that time with Mr.
|| Craig?
292
1194 A. I lmd a correspondence with Mr. Craig during the
year 1874, and after my return from Europo, commencing,
1 think, in July, and continuing towards the ond of tho
Q. Did yon have any negotiation at that time with Mr.
Craig about anything?
A. I did.
Q. Wlmt was the subject of such negotiation?
Mr. Butter: Was that in writing?
1195 The Court: You may put tho question to him by way of
cross-examination at this point, if you choose.
By Mr. Butler:
Q. Was it in writing?
A. It was partly in writing and partly verbal.
(Mr. Butler objects to tho witness stating tho negotiations
botweon himself and Mr. Craig.)
1196 Me Court: You have put in something tlint passed be¬
tween Mr. Craig and the Western Union Telegraph Com¬
pany, a notico and a hill, and now, by way of explaining,
I suppose, or determining the effect of these papers, it is
proposed to show to wlint tlioy relate and tho circumstances
under which they wore given. If no ovidonco had been in¬
troduced on tho part of tho plaintiff in this regard, I should
oxcludo the evidence at once, but, ns tending to explain
tho circumstances under which this alleged notice wns given,
it seems to mo to bo competent to provo tlint negotiations
1197 wore ponding botween tho parties, and to what they related,
provided they wore oral.
(Plaintiff's counsel except)
(Mr. Butler asks tho Court to instruct tho witness that lie
shall not, in his answer, state anything in relation to any ne¬
gotiations that was conducted in writing, but confine him¬
self simply to oral negotiations.)
Hie Court: You will not advert to tho correspondence in 1198
any way, hut simply, in general terms, state what was the
Bubjeet matter of tho oral negotiation between yourself and
Mr. Craig.
A. It was a salo to tho Western Union Telegraph Com¬
pany of certain rights connected with tho working of tho
automatic systom of telographv.
By Mr: Dickerson :
Q. By Mr. Craig? 1199
A. Yes, sir.
Q. Had you any nogotintion with any other person than
Mr. Craig about that timo. Tho bill contains tho nnmo of
Mr. Little as ono of tho parties ?
A. I should not bo able to stato at what timo I had nego¬
tiations with Mr. Goorgo Littlo without referring to what¬
ever records I have on that subject in my office.
Q. Tho dnto of tho notico is the 18th of October, 1874 ;
does that onnblo you to stato when you had such communi¬
cation with Mr. Little? 1200
A. I did linvoa few communications in writing from Mr.
Little. Some of thorn woro during the year 1871. I had
at least ono proposition, but I ennnot lix it by my recollec¬
tion. I have an impression on the subject.
(Mr. Dickorson asks tlint tho; witness have leavo to exam¬
ine his papers and bring them in Court for tho purposo of
testifying upon this point.)
Q. What wns tho subject of your oral negotiations or
conversations with Mr. Littlo?
(Objected to as immaterial and incompetent. Objcotion
sustained.)
Mr. Dickerson: Tho defendant oilers to provo by Mr.
Orton that on and about tho 13th of October, 1874, George
Littlo wns ottering to tho Western Union Telegraph Com¬
pany for salo automatio telegraphs, nud claiming to be tho
294
205
1202 owner of valuable nnd important parts of that property
that was also clnimod by the plaintiff in this suit and by
George Harrington.
The Court: I dcclino to rule upon the offer, but I reiter¬
ate the ruling which I have already made upon tho ques¬
tion, permitting you to stato that tho object of the question
is to show the fact which you havo stated in your offer.
(Excluded. Exception by defendants.)
(Eecess.)
After Eecess.
Joseph T. Murray, boing recalled by tho defendants, testified
ns follows:
Q. "When you were Inst examined you mentioned a meet¬
ing with Mr. Harrington, but wore unable to fix by any
ovent or by any date tho prcciso time. Havo you, siuco
that time, refreshed your memory or otherwise informed
1204 yourself so as to be able now to testify to about when that
interview took place ?
A. I can fix pretty nearly tho date.
Q. Very well ; about when was it?
A. It wns the timo that Mr. Edison was at work on tho
qundruplex botweon Boston and New York.
Q. You mean operating tho qundruplex.
A. Yes, sir.
Cl At what plneo was ho engaged operating that?
A. 145 Broadway.
1205 Q- That was the ofilco oi tho Western Union Company ?
Q. Was there any other circuit that wns then being oper¬
ated that you remember; you said between Boston nnd New
York?
A. He was operating botween Buffalo nnd Now York;
* v°CI? 1,1 VimCS °f llis °Perating betwoon Boston
and how York and Buffalo and New York.
Q. You mentioned seeing Mr. Eeiff after seeing Mr.
| Pe.ct to 4,10 subject upon which you conversed with Mr. 1208
| Harrington, at any time subsequently ?
, ( (Objected to ; objection overruled nnd exception taken.)
A. I mot Mr. Eeiff in Broadway,
. Q. After you had seen Mr. Harrington, was it?
A. I won’t be confident whether it wns before or after.
; Q. State what took plneo upon this subject.
• :| A. I mot Mr. Eeiff on Broadway, nt the corner of Pino
^street; I stated to him tlint there had been objections
' (raised, nnd asked him why he objected. 1207
f Q. Objections to what?
, j A. To Mr. Edison soiling that qundruplex systom to tho
, /Western Union Company ; his answer wns, that it would
j jhssist the enemy, nnd plneo facilities in their hands, equiva-
j^ent, if not superior to tho automatic, and it would bo do-
' , trimontnl to them ; that wns tho principal reason given.
' ; Q- Whs there anything said about a snlo of nutomntic?
'’2 TJwy woro negotiating, I believe, nt that timo.
I| Q- Did ho say how it would affect it?
1:1 -A. Yes, sir ; it would nffeot it; it would bo injurious to 1208
PI tlioir negotiations, or some words to that effect
> Q. Negotiations for what?
A. lor automatic to tho Western Union Company.
j; Cross-examination by Mr. Butler.
| Q- Do you think September 80th, 1874, was tho timo
IjWlion tho qundruplex wns started ?
I A- 1 would not swear, from my own knowledge, that it
awns.
I Q- Your impression is that it wns then? 1208
j A. Yes, sir.
| Q. Can you tell how long before or after you saw Mr.
|Eoiff?
1 A. I do not understand your question.
1 Q- You saw Mr. Harrington about this timo?
5 A. Previous to thnt
I Q; Well, about September 24th you saw Mr. Hnrring-
297
1210 Mr. lowrey : He didn’t say so.
Q. When did you sec Mr. Harrington? |
A, Previous to tlint date. ’
Q. How long previous? |
A. It might ho some two or three days.
Q. Then about tlint lime— somewhere between the 20tli :
and 30th of Soplcmber-didyousboMr. lleifl before or after;
you saw Mr. Harrington ?
A. I won’t be positive whether it was before or after. i ;
1211 Q- Can you loll how long it was between the time you!,
saw Mr. Harrington and the timo you saw Mr. Rciff;|.;
whether it was before or after? hi
A. I saw Mr. Rcill more or less every day.
Q. I mean about this thing that you have told us of,
when you had some conversation about the quadruples. 1
Was it before or after? How long was it between the time
you saw Harrington and the lime you saw Rciff?
A. Icnnnotsay certain. |jj
Q. Would you say within a week? b
1212 A- No> sir- I
Q. You told us what Harrington said. Ilnvo the kind-g
ness to tell us the conversation that took place, exactly, bc||
tween KeifF and you. You spoke first, I suppose? 3
A. Yes, sir. j
Q. You said what? j
A. I was some little anxious to get some money for Mr. |
Edison. That is the reason why I opened the conversation |
with Mr. Reiif. I asked him why he objected ; when he 1
could not furnish the means, why he did not let him get itfj
1213 from another source, meaning the Western Union Company,
of course. His reply to mo was, that for one, he would not
sit quietly by and see the enemy put a knifo to his throat
Says he, if they should got that, it would be an equivalent;
it would furnish them with an equivalent, if not something
better or equal to the automatic; and he objected on that
ground.
Q. If they should get that^-you mean the quadruples
and duplex ?
A. The qundruplex. >
Q. Ho says, « The reason I object is, if they should get 1214
that, it would bo equivalent to giving my enemy a knife.1’
Mr. Porter : I prefor the witness’ own language.
Q. I will ask the witness to stnto it again. I am putting
the language, to sco if I am putting it right
(Objectod to.)
Q. Will you have tho kindness to repeat ns nearly ns you
can what ho said about tho knifo to tho enemy’s throat?
A. He said for one ho would not sit quietly by and sco
tho enemy put tho knife to his throat.
Q. What next was said ?
1215
A. 1 lien lie said, that in tho hands of tho enemy it would
make them equivalent if not tho equal of the automatic.
Q. Wlmt next did you say to that?
A. I can’t recollect what I did say. There was but very
little said. It was pretty short.
Q. That was about all?
A. Yes, sir; about tho substance of all.
Q. As nearly as you can recollect?
A. Yes, sir.
Q. I will ask you whether Mr. Iloilf took yon down to
tho office, or brought you whore you could see tho deed at
that time between Harrington and Edison ?
A. No, sir, Mr. Rciff did not.
Q. Who did?
1210
A. Whon I had tho interview with Mr. Harrington ho
sent me down.
Q. Did you know about tho letter which Harrington, on
the morning of tho 10th of July, enrried to Edison?
A. I went with Mr. Harrington up to Mr. Edison’s house, 1217
ut I never know until the letter was produced kero in
Court wlmt the message was.
Q. You did go with him up to Edison's house ?
A. Yes, sir.
Q. Did ho deliver tho letter?
A. Ho wont up Blairs in Edison’s bedroom.
88
298
1218 lie-direct examination by Mr. Lowroy.
Q. I call your attention to your first answer to Mr. But-
lor this afternoon ; was that what you meant to say ?
A. I meant to fix the date at the time Edison was at
work for the 'Western Union Company, covering those
two points with the qundruplex. My conversation with him
was in the Western Union Company’s ofiico when he wnsin
there at work, covering thoso points.
The Court: What points?
1219 A' Bet"'eon Buffalo and New York and Boston and New
York.
Q. As to the day of the month, or tho month, you do not j
intend, ns I understand you, to fix it any differently than
by that event? 1
A. Thnt is the only way I can fix it.
Gerrilt Smith, a witness called on behalf of the defend¬
ants, having been duly sworn, testified ns follows:
■Examined by Mr. Dickerson.
1220 & You !iro assistant eleotrioinn of the Western Union
holograph Company V
A. I am, sir.
Q. Will you tell us at what time tho qundruplox, so
called was started at Boston, and at what time it was started
to Bufinlo ?
A. Tho Now York and Boston circuit was started in the
latter part of September, 1874. X put the instrument up in
Bos on. Tho New York and Buffalo circuits was started in
1221 tho lflUcr Pnrt o£ November, 1874.
Q. When was Edison in the Western Union office, work-
mg both those circuits ? '
York ^r'i'^is°n cooperated with me . in starting tho New
York and Boston circuit. He put tho instrument up at
latter nnrt 7l * th° Boaton end- £ was in the
vith Jo nn 1 !n B0St0n' ■‘'so cooperated
mux mo on tno Buffalo circuit
it B,°St°n Circuit was continued in action niter
put up? ^ nnd g01"e whcn the Buffalo circuit was
A. Yes, sir.
Q. So thoso two wore going at thnt time together ?
A. Yes, sir.
Q. Tho latter part of November, 1874 ?
A. Yes, sir.
Q. You have a groat doal to do with tho development of
this qundruplox ?
A. The great majority of tho oircuits now working I have
assisted in putting in operation.
Q. What inventions, if any, nro necossary, in order to
make what wo call 99 operative at a qundruplox, in nddition icon
to what is in 99 ?
A. I enn think of throe very essential points that nro
necessary.
Q. State them.
A. Ono is tho uso of what is known ns Stcnrns’ differen¬
tial ; second, tho bridge system of Stearns ; third, tho con¬
denser, ns used by Stearns.
Q. Aro thoso all subjects of patents?
A. I boliovo they are.
tj. On longer linos, say to Chicago, nro thoso inventions
nil that are necessary to work 99 into a quadruplox ?
A. Tlioy nro not, sir.
Q. What other inventions are necessary in prnotieo ?
A. I moan to say tlioy aro necessary to tho successful
working of that circuit, but tho application of them differs.
Q. Aro there any other inventions than thoso thnt you
have mentioned necessary to bo used in working to Chicago,
for instance?
A. No, sir.
Cross-examination by Mr. Butler. 122-
Q. When did you go to tho office of the Western Union
Company to work ?
A. I have been in tho omploy of tho Wcstorn Union
Company about twenty-two years.
Q. When did you first find Mr. Edison working there?
1 only desiro to fix a date.
A. Along about the first part of September, 1874.
1226 Q* What was your business when you first went to wort
for the Western Union Company?
A. Do you mean my occupation when I first entered tlio
service of the Western Union Company?
Q. Yes, sir?
^ 11 was formed at that time, a dummy boy, at 81 State
Q. You began at the bottom of the ladder?
A. Yes, sir.
Q. When wore you promoted to bo assistant olcotrician ?
1227 A- September 15tli, 1874.
Q. What was your business on January 1st, 1873 ?
Iicto." WnS °hi0£ °P°rat0r ^ tb° ,,min “tf'00 of tho company
Q. In Now York?
A. Yes, sir.
tnny°n r°m!lin0d in tlmt oonllition of things in that
w5 vm tjr WOr<! PT0l0d °n tl10 16tl‘ °£ Member.
Z liasTarge ofT *" °hi°f °Pemt0r ^ bat
228 yisto„A Crb‘]:.T’b0r0l''Vil'°s«™1>lacod under his super-
A. Yes, sir.
Examination by Mr. Wheeler.
itlTO00’S.tOI,rovi(l0" ' c S I 1 ehIZ,?'rb'
.articular contrivance is one of tho particular 1231
st at lave been adopted bj elect, c .. for
ng tho objeut you hnyo stated ?
iventing the reception of a message from inter-
tho transmission »
mo object is sought to bo neeomplisiiod by
out volitions of Edison, which are called also
"hioh hayo boon in evidence in this ease, is it
°“ SF°ko soeondly of tho bridgo system of
ito, if you please, tho ol.jeet which that aims
i m conneotion with the deployment of easo
ruplox ?
no as that of tho differential,
was not, ns I understand it, tho inventor of
t that bridgo system employed by Sir Charles
Q. Tlio tiling patontcd t
A. No, sir.
Q. As abridge system, gcnernlly spenking, it is old f
A. J lie bridge system ns used by Valle and Wheatstone
are for electrical measurement ‘ ' 0
Q. Tlio tiling patented by Stearns, you did not mom, r„
say that that was old 1 "10a" to
A. Jsro, sir.
-MW ia to Iieumuizo tlio eflcct of tlio statio
mrgo and discharge of the lino upon tin home instr ..meat,
liafc is tlio application ns Stearns applied it, or tho pur-
).so for wluoli lie applied it
Q. Any other device or contrivance which would operate
like niunnor to neutralize tlio offeet of tlio statio dis-
inigo would be as useful in connection with case !, 9 as
o a teams condonsor, would it not !
A I don’t know about that} what is known ns the In-
ictiou coil is used, and I believe lias been used by
cams but whether it will answer tho purposes in ovory
,se of ho condenser I am not prepared to say. J
yoa I'lem* show to the Court, co c tm ,tl
ils drawing annexed to this instrument in tho case known
> so 113, whore tho bridge which you have spoken of in
1 ch you p ace tho receiving instrument would bo placed
miildlh-,?^' IT th,ati ClCIUly ,lmle,'sta' 1 tl 0 q 0 t
rinl« ; ’,0tlJ0ry0,,r0f01' t0 t]‘°
owihrStTO,lt t0 bnvo you sll°"' tho bridge, and then
°" where you would put tho receiving T *
lou don t mean to soy that these particular things
patented by Stearns were tho only devices that could bo
to —> ■ 'i.'* «“IS
it Mm!!l°mp‘lex ^ °“ly 1>rnotionl 1,lea,is employed to mnko
J jJ“s“aro 11,0 “mans which you do actually employ ?
The Court : Do you know of any others i mo
p 3’ n° y,°!1 1”loa“ to Sl*y that nono of these inventions of
w ieh i<! ‘ T',° <,U8c'I'ibtfl1 ia tllu iipplieations,
Uio slni >U i,,“VUlCnU0 in tllia case, wonlil no, ueeo, pH I,
the mine result ns the differential duplex of Stearns and
A. I do.
‘"''T'’- tl,0,,> tl,at tl,oso nre successful to no-
inphsh the objuut soaSbt ^ ho accomplished by them ?
,-ctl 0 Is ns C0,“lmr°l1 wUb tI,u differential or bridge
v,vlt <l til110- Yoa spoke in the first place of
; S' IUI18 differential duplex 1
A' Yes, sir.
„l?a tb'"k that that accomplished the result of on-
the out »' "i" t0 roco,vo a message without interfering with
hiv„„,i message moro successfully than any of tlieso
.noons of Edison l
A. Yes, sir.
8-exam- 1246
1242 Q. But still you don’t mean to say tlmt tlio inventions of I
Edison would not accomplish tlio result 1 H
A. Practically tlioy would not. H
Q. That is your judgment ?
A. Yes, sir.
Q. What is the thing that is patented by Mr. Stearns in
his dill'crontin! duplex ?
A. The condenser 1 understand to bo the essential point,
tlio application of tho condenser.
Q. Yon were ashed on your re-direct examination whether
1243 you intended to say tlmt the thing pntented by Stearns in
his dill'crontial duplex patent was now or old. You said,
in your judgment, tho thing patented was now ; did I un¬
derstand you correctly 1
A. Yes, sir.
Q. Bo you say in your judgment the thing patonted in
that patent was tho condenser?
A. Tho combination of tho condenser with tho differen¬
tial or bridge system.
Q. look at tho drawing which is annexed to tho speci¬
fication of Exhibit W, which is tho reissued patent to
1244 Stearns lor nnprovemont m duplex telegraphs, and state
■ to tlio Court what tho novelty is.
A. Tho d igin rci i ci ts tho bridgo method. In ad¬
dition to tho relay in tlio bridgo or cross wire, is shown a
second relay between the equating resistance and tlio
earth wire. This relay is evidently meant to bo placed there
ns a substitute for tlio condenser.
Q. You say “ this ” relay ; givo tlio letter mark.
’ A. It is for neutralising tho static effect upon tho relay
in tho cross wire.
Q. That you understand to bo tho essential novelty of
1245 tho invention of Stearns, which is described in this reissued
patent ?
A. Yes, sir.
jlfr. Dickerson: I did not ask tlieso questions for tho pur¬
pose of asserting that Stearns or anybody else is the inven.
tor of these things, but only for tho purpose of showing
that tho qundruplex is not tho thing in 99, and to explain
that the duplex is not tho qundruplex per see, and that Cnso
99 u.....ot bu worked practically ns a qundrux>lcx without
tho addition of other inventions.
jlfr. Wheeler: Then wo will not continuo our cross
ination.
Mr. Dickerson : I offer to read nil assignment between
Harrington nml Little. Tlio certificate covers tho Barring,
ton and Edison contract of 3871. This is a contract of
Harrington and Little in respect to tho subject matter that
is referred to in the contract between Barrington and Edi¬
son of April 4th, 1871, and it gives a definition to terms
that aro not contained in tho contract made by Georgo
Harrington.
The Court ; Yon offer it in tho nature of an admission 1247
by Harrington.
Mr. Dickerson : In tho nature of an admission or state¬
ment by Barrington ns to tho way in which tho moaning
and use of tlio words “ automatic” or “ fast” telograjiliy
was then denlt with by him in making his contracts. Ono
contract is dated Sopt. 22d, 1871. Tlio other contract was
dated April 4th, 3871. On tlio 22d day of September ho
miulo another contract on tho sanio subject matter with
Little, which goes into tho Patent Office and conics to us
under tlio same certificate, as showing whnt the pnrtios ^248
themselves at that time were dealing with, and whnt they
were intending by certain words tlmt were used in both
nliko.
(Objected to.)
i Fhe Court : It is res inter alios acta, mid it is introduced
for tho purpose of enabling the Court to construe tho in¬
strument executed botween Barrington and Edison.
Mr. Dickerson : Excepting tlmt it is Barrington’s deed,
written within six months of tho other, describing tho
same subject precisely that is described in tho deed. 1249
The Court : Tlio admission of it would open tlio door to
tho introduction of rebutting evidence, tending to show' in
whnt sense tho deed between Barrington and Little uses
tho words that aro therein contained, aiid of other deeds
perhaps showing m what senso it was used there, and so
on. I must therefore oxcludo tho paper offered.
Exception taken by defendant.
Adjourned until to-morrow.
Hearing Eesumed.
r (vT«u.' •
iZ0U May 25f/i, 1877.
George M. Phelps, Jr., called for defendant and sworn,
examined.
By Mr. Dickerson ;
Q. 'Wliat is your occupation and position ?
A. I am employed at tlio factory of the Western Union
Telegraph Company, assisting in tlie supcrintcndency there
under my father, and have general charge of the accounts
1251 among other things, and up to the year 1875 a considerable
part of them wore kept in my handwriting.
Q. Havo you those hooks of accounts or that hook hero?
A. X have ono. I havo an abstract of all the rest.
Q. Have you an abstract of the accounts of machinery
and apparatus made in connection with the now called
“ quadraplex?"
A. Yes, sir.
Q. Will you produeo that?
Mr. Butler : I prefer to havo the book. (Witness pro-
1262 duces book.)
Mr. Butler: I prefer to verify tho abstract mndo by this
witness with tho book.
(General Butler holds tho book and tho abstract is verified
by the witness ns follows:)
£?. Under date of June 28, 1878, is the following entry : 11 0
/nqj MJ< ixperimentnl relays. Edison.” I find tho book says
'I I IP'’ “Edison," but I omitted Edison in putting it down here, and
1253 x now put it in pencil on the abstract The amount is $1*14.
Under same date: " 6 experimental koys, $89 ; total, $183.
By Mr. Lowcy ;
Q. This is 1873?
A. It is the year 1878, at present I find on my abstract
here, under date of August 20th, some apparatus amount*
ing to $102, which I -don’t find entered under the dnto of
kt'Ut II) (
Kfkfrj "
(I,
2(5/7 3vKe,Yh.
August 20tli, in my book, and I can toll tho roason of that
and can point it out if it is desired. I havo made a copy of
thoso papers several times. This dnto of August 20tli un¬
doubtedly refers to the dato of delivery. Wo had delivered
a great many things to Mr. Edison, somo of it had boon de¬
livered not knowing whore tlioy were properly to bo
clmrgod, and afterwards they wore charged undor a subse¬
quent dato. I will look for it and I havo no doubt that I
can find it in tho book in a little while.
Mr. Butler: Wo will call that not proven then.
Mr. Loiorey: If ho doos not Had it, it will bo disregarded.
Wtnm: Undor dato of Juno 25, 1874, I find here, 2
oxporimontnl relays for Mr. Prescott ; 2 oxporimontal trans¬
mitters; 2 polarized relays; altering 2 polarized relays,
$110.
By Mr. Butler :
Q. How is it entered there ?
A. I know prooisoly what thesa were.
Q. What wore they?
A. Tlioy rolato to the quadruplox matter; I know what
they are, fori nin familiar with them; tho noxt is Juno
27th : 4 sounders for Prescott, mid alterations to tho same,
$85 ; this is 1874 ; tlion the noxt entry is July 6th.
Q. Stop a minute. Do you find on your book a memo¬
randum like this, “Cases 99 and 100, caveat 68 of Gerrit
Smith ?"
A. No, that is not in tho book; if you have thoso ex¬
hibits that were produced in court, I can point out to you
tho connection between thoso, beonuse they wore in the
nature of orders to us to make tho apparatus .
Mr. Butler: Suppose you run through the bonks first.
The Witness: Tho last was $35; that was verified; the
noxt is July 6th, 4 duplex rheostats for Mr. Presontt, $160.
308
1258 Mr. Butter : Beforo you pass from tlmt I find tiro word
“query” thcro in your handwriting. j
A. That query is put in there for this reason: I cannot
positively say that thoso four particular pieces of apparatus |
wcro for that purpose ; I prcsumo they wore, but I don’t j
know that fact absolutely, therefore I put that query.
Q. Go on.
A. July 8th, 2 condensers, Mr. Prescott, $80.
By Ur. Dickerson :
J259 Q. Thoso woro for quadruplox?
A. Yes, sir.
By Ur. Butler :
Q, Go on.
A. July 10th, 8 models for Mr. Prescott, $74 ; tho noxt
is July 14th, at tho bottom of the page, 4 experimental in¬
struments for Sir. Prescott, as per order and specifications,
$120. That is tho last ontry on tho page. Tho next is
July 24th, 5 experimental instruments for Sir. Prescott, as
per order and specifications, $105 ; July 81, 1 model for
1280 Mr. Prescott, $12 ; August 20th, quadruplox apparatus,
order Sir. Prescott. There is a lot of details hero which I
will read if desired.
Ur. Butler: You had bettor read them.
The Witness: Pour doublo relays, 0 sounders, 8 polarized
relays, differential rolays, 2 polariz:d rolays, 4 rheostats, 2
magnets with armature on haso ; total, $605. September
22d, altering quadruplox relay, $16. That is the last entry
1281 on 1,10 Pn£°i I think.
Q. That don’t say Mr. Prescott ?
A. Ho, but it says quadruplox relay. That is the way I
identify it. September 26 is tho next, 1 experimental quad-
ruplox relay, $24; October 7, 1 model for Mr. Prescott, $20.
Q. I see hero on the same day “condenser, Boston, and 1
model for Mr. Prescott,”
A. The only thing that was put in here was the $24.
Q- I put iu tho other.
A. You can do so, I suppose. Tho next is October 13, 2 1262
experimental relays, Mr. Prescott; 4 polarized relays, 4
special spark coils, aggregating $144. October 14, 1 ex-
porimontal relay, Mr. Prescott, $24.
Q. Tho first entry thcro is 5 fast stock printers. Mon¬
treal 'Holograph Company 1, and 1 experimental relay ?
A. Yes, Mr. Prescott, $24. Tho noxt is December 19.
Q. Thera is another one ?
A. I have a query thcro, ns you will notice, and I left
that ontry out in conscquonco of that. Dccombor 19, altera¬
tions to transmitting sounder, $3. 1263
Q. There is an entry here, “ Alterations to polarized relay
for Prescott?"
A. Tho noxt is December 24, Mr. Prosoott, alterations to
polarized relay, $10.80. Beyond December 24 tho books are
not here. They are not iu my handwriting for any length
of time after that. I can hnvo them hero in n few minutes.
Q. Wo don’t desire after Dccombor.
A. There are other experimental 'instruments furnished
wiiioh I hnvo n record of hero.
Mr. Dickerson: In that oonneotion wo hnvo Mr. Edi- 1264
son’s orders indorsed by Mr. Prosoott, which are photogra¬
phic copies of the original. Tho originals wore in our bag
among somo papors which hnvo been lost or mislaid in tho
courso of tho trial ; thoso woro madu a good while ago and
nro photographs of tho originals.
Mr. Butler : I don’t make any objection ; I neoopt thorn
under that statement of tho counsel.
By Ur. Dickerson :
Q. (Handing witness papors.) Do you recognize thoso 1265
papers ?
A. Tho originals of thoso woro sent to us and enmo into
my hands in tho usual course of business.
By the Court : .
Q. Sent to tho factory?
A. This p ip >r which I hm real inclulu the apparatus
810
811
1208 made from tlicso ordors. I linvo onoo identified the exact
relation botween them nnd tho original papers wltieli you
had.
Q. You had tho original papers when you identified the
By Mr. Butler :
Q. Thoso woro a description of tho thing that was
wanted ?
1207 A. Yos, that was tho indorsement requesting tho factor;
to mako thoso things.
By Mr. Dickerson :
Q. Tho orders woro in tho handwriting of Mr. Edison ?
A. Yes.
Q. The indorsement in tho handwriting of Mr, Prescott?
A. Yes, somo of them linvo no indorsement.
Q. Tho indorsements are all in Mr. Prescott’s hand¬
writing?
1208 A. This first papor which is in Mr. Edison’s handwriting
calling for various pieces of apparatus, is indorsed by
Mr. Prescott, under dato of Juno 10th, 1874. This which
1 now hold in my hand is a series of sketches for patent
office models which wo woro requested to make. On the
last hut ono I find Mr. Prescott's indorsomont: “Please
mako this inodol." That sooms only to rofor to ono, but my
recollection is tlint they all came in a bunch.
Q. Thoso models woro mado ?
A. Yes, those I road.
1280 Q- Those models wero for what ?
A. Tho models were for the apparatus described thoro
in 94 to 100.
Q. You mado the models from 94 to 100 under that
order?
A. Yes, sir. I find a letter in Mr. Edison’s handwriting,
signed by Mr. Prescott, ordo'ring certain apparatus, which
was tho apparatus in ono of tho entries I have read. I find
our regular office stamp upon it. Tho word “done" is
stamped upon it The stamp is so indistinct that I cannot 1270
see tho month, but it is the 14th of June or July. Here is
another which I also recognize, which is a copy of tho origi¬
nal that wo had in the handwriting of Mr. Edison entirely
except tho endorsement, which is in Mr. Prescott’s hand¬
writing. There is a memorandum of my own under that,
showing when they woro delivered. There lias a pencil
mark been mado since tho photo-lithographing was dono
on tho face of it.
(Various papers, consisting of letters, sketches, etc., offered 1271
in evidence, nnd marked defendant’s Exhibit No. 48.)
Q. What is the sum of tho expenses, in tho account
which you have just verified?
A. Shall I omit tho one which I was not ablo to point
out?
Q. You may omit that for the present.
A. I am willing to state positively that it is in tho book,
nnd that I can undoubtedly find it.
Q. Take tho sum of tho expenses, then ?
A. Up to tho time that wo stopped verifying tho ab- }272
struct 7
Q. Up to tho timo that the account ended.
Mr. Butler: It ended Dcccmbor 80th, 1874.
Mr. Dickerson ; Givo us tho sum of tho oxponses up to
tho timo tho account ended.
A. It will take mo some few minutes to mako tho foot¬
ings.
Mr. Dickerson : You can leave that question to bo an- mg
swered hereafter. I will ask you another question now.
After that date, wero there other expenditures in develop¬
ing tho qundruplex in tho way of experimental work dono
by you ?
A. There wore.
Q. From tho 80th of Dccembor, 1874, up to the present
time?
A. Yes.
818
812
1274 Mr. Butler: I object to this evidcnco on tlio ground that
after Mr. Edison mado liis transfor and censed to linvo any¬
thing to do with tho matter, it is immaterial to show that
tho defendants went on making apparatus for a thing
that they claimed to have bought on the 80th of December,
I object to testimony in regard to what was done after iho
time that they had notico that tho contract, so far ns Edison
was concerned, was rescinded and that adverse interests had
1275 Mr' I>ichrson • point of view in which wo offer tho
ovidonco in this. Mr. Edison loft us before this invention
was developed to its practical maturity, with certain pro¬
cesses going on and certain apparatus being made, and
which have, since tlmt time, been developed, and it has cost
tho Western Union Company, in pursuing tho expondi.
turcs, tho boginning of which was previous to the date of
Mr. Edison’s departure, a largo sum of money to porfeot
and. dovolop them; and it belongs to tho equities of our
easo to show tho amount of such oxponditures.
1270 Mr- Bounty: Our object is to provo that, subsequently to
$° dnt0 monlionod, *1» Western Union Company and Mr.
Prescott wore necessarily involved in tho expenditure of
largo sums of money in order to perfect and complete tho
Edison0”8 ”"d pr°00SS0S "’llioh woro left incomplete by Mr.
which “ T" lh0 ground tlmt notion
c d d nrh ° mV°b.oen 8'von has the effect con-
tended for by your adversaries, it is a matter of no sort of
1277 Er T °XPendir 8 «» -bscqucntly made. If
_t docs not, of courso you have no advantage in putting it
(Defendants except)
The Witness: Pennit mo t(
the book which I omitted in
verified if desired. It is the
1 call attention to ono thing in
calling out, and which can be
six sets spoken of in Novem¬
ber, amounting to $1,728. That entty is here, and I can 1278
point it out
Q. In addition to the others you lmvo mentioned 7
A. In addition to what I have given you.
Q. Havo you got tho sum total of tho oxponses up to
December 80, 1874 ?
A. $8,554.80 is the aggregate up to that dato.
By Mr. Butler;
Q. Including this item of November ? 1270
A. Yes, sir ; including tho ono I lmvo just given you.
Q. Ilavo you tho order under which this item of Nov¬
ember was included ?
A. It 1ms boon in Court two or throe times ; Ilmvn'tgot
it myself, but I lmvo seen it and remember it very well ; I
think it is tho ono from which you quoted a few moments
ago.
Q. Tho ono whore Mr. Orton said ho would put speed in¬
to them ?
A. Yes, sir.
Q. Were those six sets ordered October 10th.
A. About that time.
Q. Those were put to work on tho lino?
A. I presumo so ; I didn't put them thero, but undoubt¬
edly they wore.
Q, You know they were operating ?
A. Yes ; I knew they were.
Q. And all these machines which woro made after tho 1281
10th of July wero put to work on circuits, longer or
shorter, as they wore adapted for tho puiposo of the busi¬
ness; they were set to work?
A. I presumo not all of them ; I think some of the cart
lier ones woro worked on local circuits in the office ; I pro-
sumo Eome of tho onrlier ones never went on the line.
Q. Tho earlier and experimental ones?
A. Yes.
40
(»£>{»£> !>p t>£>
1282 Q- Blit as they eamo to he developed they wero put on
the lino ami worked on the line?
A. I suppose so ; I am not concerned with that part of tho
business, understand; I cannot speak positively about
that.
Q. Will you look at the hook, or your exhibit, nnd tell
me the date of a relay— one differential relay, three duplex
transmitters nnd two relays. Have you such a charge?
A. I don't see it here among those that I have got.
Q. I think those wero in 1878 ; you didn’t givo mo but
1283 two in 1878. Look in 1878?
A. Hero is six experimental relays, cost §188.
Q. One differential relay?
A. That, I think, is down here.
Q. What timo is that?
1878?
Yes.
Tho throe duplex transmitters?
Yes.
Amounting to §36 ?
Yes.
And two relays, §82 ?
Yes.
(Handing witness paper.)
Q. Were those given under that order, Exhibit 10 ?
own on 1 pr°SUnie 60 1 1 ",so flnd H llns writing of my
Q. You know that ordor?
A. Yes.
f "d ‘I01'6 is a furtllel' memorandum, "Borrowed Au¬
gust 20th, 1873, N. 0. M.,” that is Norman 0. Miller, isn’t
A. 1 suppose so.
Q. You havo no doubt of it, have you?
A. I think so.
Q. And the whole order is in his handwriting?
A. I am not familiar with Mr. Millor’s handwriting, and
could not say.
Q. On this side there is a relay of 125 ohms and a Phelps
key ; havo you got those on your list?
A. No, sir; if you ask mo why, according to my best
judgment, I think, I know. It was because Mr. Edison got
somo of that apparatus from us at the factory, and he also
got othor apparatus from tho supply department, which is
another concern from us.
Q. But, wasn’t it all got from tho supply department? I
find on tho samo paper " Borrowed of W. 0. Cqig, April
J 1st, 1878, by N. 0. M:" That is Normnn 0. Miller again?
A. I don’t know ; I do know that what is in this paper
was furnishod by his ordor; I romombor tho transaction ;
that paper rocalls it to ray mind.
Q. Wero those specified in tho account?
A. Yes, and they agree with this precisely, ou ouo side of
tho paper.
Q. After thoso wore mndo, if thoy were returned,, they
would be returned to tho supply department, I suppose ?
A. After thoy wero made ?
Q. Yes, after thoy wore mado and loaned to Mr. Miller, :
when thoy wore returned thoy would bo returned to tho
supply department, wouldn’t thoy ?
A. I don't know that ; they novor wero roturnod to us.
Q. Thoy would bo returned to tho supply department,
would thoy not ?
A. I don't know how that would bo, I am sure ; I don’t
know anything about their being returned.
Q. You would know whothor they wero returned to your
department ? ^
A. I know they wore not returned to us.
Q. Thoy were not returned to you after they wore bor¬
rowed ?
A. No, sir.
Q. Then thoy stand on your books of account as bor¬
rowed, and whether thoy wore returned you havo never ex¬
amined to see?
A. Thoy don’t stand on our books ns borrowed.
f
816
1290 Q. They were borrowed, woro thoy not ?
A. It seoms so from Chat ; but, so far ns wo woro con¬
cerned, they were chnrgod up.
Q. That is to say, in order to keop your accounts straight
you charged thorn up ?
A Certainly.
Q. You charged thorn up to whoever thoy woro issued
to; that is the way, I supposo, is it not?
A. That would be the way.
Q. Wero those ontered at the timo of tlio dolivorv or
1291 before, or after ?
A You mean this particular ono, or in gcnoral ?
Q. In general.
A They were made upon the samo day; sometimes, nos.
sibly within a day or two.
Q. I find that you lrnvo got down boro six sots, and that
apparently thoy woro ordered on the 21st of December, anti
woro delivered on the 80th November.
A. I think thoy woro ordered in October. I could not
very well deliver them before thoy woro ordored
1292 Q. That was a mistake, of course, of mine. After this
entry of the six instruments there is no further entry there
ns to Mr. Prescott? J
A. I believo there is ; I lmvo givon thorn to you. Do-
r'Ury ofS8'-'J December 21st
an entry of *10.80. Ihoy are small amounts.
Q. Would that bo a part of these instruments.
A It might bo; I don’t know whether it was or not.
Q. You don’ know but what those figures rolnto
sets of instruments last delivered ?
1293 *don’t .k'’0"’ whether thoy do or do not ?
Q- lliey might and thoy might not?
A Yes.
A. I think there are.
marked them with a query? rtam about tl,0:n a,lJ
A That speaks for itself. You will find the word 1291
“query” put opposite to suoli ontries ns I liavo spoken
of.
Q. And tlioro were other mattors ohnrged to Mr. Prescott
—experimental mntters during this time, which you did
not put into this account, because they didn’t go into this
class of experiments t
A Probably that is the ease.
Q. Do you know anything about the dates of the inven¬
tions.
A. Not very much. Would it bo proper for mo to say, 1295
in connection with the models, that on tho book, eight
models nro charged, and this paper onlls for ton. You will
find subsequently charged two more, making up tho ton
oallod for hero. That is to say, eight woro made at ono
timo and two at another. My memory in regard to tho
eight models is, that I know Mr. Edison brought those to
mo in person, and I conversed with him about it.
Q. The drawings called for ton, and oight woro inado at
one time, nud two subsequently ?
A. Yes. 129(1
Q. Did Mr. Prescott know of and direot tho work done
on these quadruplex maohinos duriug tho fall of 1874 ?
A. Ho did.
By Mr. Dickerson ;
Q. What is your profession and position ?
A. I am tho oieetrieian of the Western Union Telegraph
Company.
Q. How long havo you been sueli ? 1297
A. Seven years.
Q. You were tho Goorgo B. Prosoott party to tho con¬
tract of August 19tli with Thomas A. Edison, in this suit?
A Yes.
Q. Has any other person than Thomas A Edison any
interest with you, directly, or indirootly, in that contract?
(Objected to as question of law.)
1298 Mr, Dickerson : We wish t
';as °0,|trnofJ agreement "''1Ct,10r Mr. ft* |
else by which m,y one else „ "rr.n"g°'ncnt with n»v om I
profit. 7 e,so pertioipatos will, )lim ,;f I
The Cnirt • *pi,n* . i-t'
edto. ■ <ll|esti°n, I presume, lv,„ llot bo 0 bjcct
Q. UjjyQ y*.
.» ^ ■
shnr°",1,°n ,m''° lwd> notr have’ Z "h'Ch a">’ P«won or
•t
2 Precis thereof ?
1800 tZT', t i
s? ^■‘•sssssaXSit
:£?k=T I
Ts„.u„ .
TfJ, 1
- ‘vasSr SKf * *■* — - I
(Objected to.) <3
25.VS t,mtJett-? I
I
vk
I Q. What is that heading? ISq2
I A. Tlmt is the beading of my official paper; it was writ-
j ten in my oflico by Mr. Edison, on my official paper.
| (Defendant’s counsel reads in evideneo memorandum of
agreement abovo referred to, dated June 21, 1874, marked
Defendant's Ex. No. 44.)
Q. Was that agreement ever signed by you?
A. No, sir.
Q. Will you state what alterations were made, if an}’, in 1303
that proposition, and under what circumstances?
A. I suggested to Mr. Edison tliat this clause, ‘‘Also that
the profits at wbioh tbo inventions are to be sold shall bo
satisfactory to myself should bo mado to read satifao-
tory to both Mr. Edison nnd myself ; also, that in regard to
tbo clnuso relating to tbo proceeds, whore be is to reoeivo
$1,125, because bo bad paid for certain models for tbo pa¬
tent offico previously, that I would agree to pay for those
without oxponso to him in future ; thoso were tbo two modi¬
fications, and all that I think were suggested . Mr. Edison 1304
agreed to thoso changes that I suggested.
Mr Butter : I object to this evidence.
The Cowl: It does not vary tbo terms of tbo contract at
all ; it merely has a bearing upon the question os to whe¬
ther any undue influence was exerted upon Mr. Edison, or
any unfair advantage was takon of him. It has a bearing,
perhaps, upon that collateral issue, otherwise it would not
be relevant or important.
(Objection withdrawn.) 1305
Q. In the contract of July, 9th, which was amended Au¬
gust 19th, it is provided that neither party shall sell or
lieonso without the consent of tho other. Will you stato
the circumstances under which that provision was mado?
(Objected to on tho ground that tho contract is made and
820
. . 821
1303 has its own effect, and that all negotiations were merged in i.
'l) ' 1
The Court: 1 do not tliink tlicro is any evidence before
tlio Court which will justify a finding of pressure or unduo if
influence at ail. There is no evidence which occurs to mo i i
now upon which tliatpointcan be made. I will permit this f
testimony to go in; it has no other bearing; it does not •?
vary the terms of the contract, and is not offered for that :j
purpose, but,' like the testimony just received, to which oh- ;
1807 jcolion wns wWidrawn, it would lmvo a bearing, and, per- 1
haps, an important bearing, upon the question of undue in- ,'f
ilucnce or pressure. I
Hr. Sutler ; So far as that particular clause of tho contract :j
is concerned, wo have already put in somo testimony show- *
ing that Edison put it in ; and lieiff says it was tho only "■{
saving elauso to save Edison and himself. *
Q. You have been in court duriug this trinl and heard
. „„„ 1 10 tCEtimon->' of Jrr- ScrrcI1 when lio was on tho stand ? ;
1808 A. Yes, sir.
Q. Will you tell us tho conversation with Mr. Sorrell ' ]
that preceded the alterations of the contract, so ns that you : j
were no longer, apparently, tho joint inventor, but tho ns- :]
Bigncc ? ■ j
(Objected to on tho ground that defendants have nlrondy
piovcd by Mr. Sorrell a certain conversation between Pres¬
cott and himself, and they prove it ns they chose, and they
1809 mony1 n°'V Und°rlnlt0 l° conlradil!t or l° support his testi-
. f!lc Courl: t»«st exhaust their case in tho first
instance.
(Exception.)
abom fi,V° lll° convcrtnlio« ia substance. On or
about the 19th of August, 1874, I went to Mr. Sorrell’s
office to sec tho application for duplex inventions which Mr. . 1310
Sorrell and Mr. Edison had prepared.
By the Court ;
Q. The applications for presentation to tho Commissioner
By Mr. Dickerson :
Q. From 94 to 100?
A. Yes. These specifications were prepared to be signed
1811
A. Yes. These spcciucatiotis were prepuruu lu uo
by Edison and myself as joint inventors. During tho -it,
terview, Mr. Sorrell remarked that Mr. Edison hnd mndo
somo applications for duplox inventions through Munn &
Co., and that ho had sineo givon him (Mr. Sorrell) a power
of attorney in thoso oases. I think ho said that ho hnd at¬
tempted to get them from tho Patent Office ; 1 cannot givo
tho conversation oxnctly as it ocourrcd in his own words,
lie remarked that if any of the inventions, for which Mr.
Edison had made previous applications, contained any do- 18i2
vices which wero in tho present applications, legal difficul¬
ties might nriso in tho future ns to the faot of tho joint in¬
vention. lie remurkod that ho did not know whether there
wore any or not. I then asked him what constituted a
joint invention, and ho said that it must bo something more
than furnishing facilities to make the invention ; something
more than tho more testing of tho machine, and gave some
definition upon which I made, substantially, this inquiry :
"To bo joint inventors is it necessary that onok of the par¬
ties to it should liavo contributed some essential feature, 1818
separate and distinct, so that one can say this particular
thing is mine, and the other can say that particular thing
is his." Mr. Sorrell replied, as I recollect, substantially
that it was. I then said to him, 11 1 do not consider myself
a ioint inventor, and I shall decline looxecuto these papers
as joint inventor." I then asked Mr. Sorrell how I cOu d
have my rights protected. Ho said that Mr. Edison could
apply for a patent ns tho inventor and assign a half interest
to me. That was substantially all the conversation that
3
S22
1314 took plncc. I subsequently s
’ Mr. Edison and tol! ;bo considered. You are now giving him notice ; tlu
ftb bo nil tlioi'o is in tbo ground of your objection.
Ur. Butler : Tlmt is certainly objectionable.
The Court: It would be, unless Mr. Edison wero subse¬
quently' informed of what look place, as tbo witness seemed
to bo going on to state.
Ihc Witness; I saw Mr. Edison, I think, the saino day
and told him of my interview with Mr. Sorrell and what I
1816 had decided upon. Mr. Edison acquiesced in it anil wont
with me to Mr. Sorroll’s olliee, where the subject of tlic sub¬
stitution of the paper of August 10 th for tlmt of July 9th was
agreed upon. I think I let! with Air. Sorrell a copy of my
agreement of July 9th, and that ho mndo some marks in pea-
oil upon it in his own hand. If you Imvo that paper I
think you will fiud tboro nro some pencil momoranda in
Mr. Sorrell's writing upon it.
Q. That original paper contains marks mado by Mr. Sor¬
rel upon it at tlmt time?
1310 A. Yes.
Q. Hnvo you, at presont, knowledge of the contract said
to have been executed October 1st, 1870, botwoon Goorgo
Harrington and Thomas A. Edison, and also of another in-
strumont said to have boon executed by Thomas A. Edison
April 4th, 1871, which nro exhibits in tho bill of complaint
against you in this case?
Ur. Sutler: I objeot to tho question on tho ground that
the rule ot practice invariably is that when you begin to
1S17 put in a conversation you must go through the whole of it,
and that you cannot return to it afterwards, after you have
put m other matters which may tend to lead the witness.
If ho has finished this conversation, anil don’t mean to re-
urn to it, then lie can go on with any other part of his case
the he likes but lie cannot return to this conversation. I
object to that question at this time upon that ground.
i| A. Yes, sir.
S Q. When did you first have knowledge, notieo, informa¬
tion or suggestion ot any kind of tho existence of tlicso
papers, or either of them ?
A. Not until after tho Gould and Harrington operations
of Jnnuary, 1876.
Q. Not till tho year 1876 ?
; A. No, sir; not until tlmt year. 1819
I By the Court :
| Q. What do you refer to by tho torm “ opomtions," any
'contract or paper?
■i A. What I rofor to is tho ovidonco in regard to what Jay
Gould had bought of George Harrington about the 13th of
January, 1876.
■> Q. You rofor to some contract or transfor tlmt is in ovi-
donco ? 1820
A. Yes, sir ; I rofor to tlmt fact which is ovidonco, that
about tho midillo of January, 1876 -
j Q. Tho torm “ operations, " which you uso, rotors to some¬
thing that 1ms boon put in ovidonco lioro?
! A. Yes.
By Mr. Diclccrson:
Q. You hoard Mr. Sorrell testify, you say, tho otlior day,
in respect to some stntomcnt said to liavo been mado by him
,io you, as to tho contract on record of April 4th, 1871. Did 1321
■you hear what Mr. Sorrell said on tho subject?
The Court: When ho does re
, (Objected to on tho ground that tho counsel, after having
brought the attention of tho witness to other matters boforo
Ins narration of tbo conversation was concluded, now re¬
turns to tho same conversation about which bo interrogated
the witness, and in roforenco to which notice was given in
the objection will |ho ground of objection previously stated.)
» ?* ■' 1 nm olcar t,mtit bo an error, General
Butler, if I were to exclude tins testimony; of course tlio
objection you stato is applicable to the question which you
anticipate, but the question now put is simply whotl eHia
board what Mr. Sorrell said. W IWMM.ot ho
A. I did.
or^vDoLM,'‘ Sm'011’ ?“ y°m' ln'eso',cc- in that conversation
01 any othci conversation provious to 1875, over rotor to or
montion the contract of April 4th, 1871, on record in the l
Patent Office, or any contract whatever on record or not on i
1823 recori’. botwoon Harrington and Edison ? ' |
(Objected to as contradicting their own witness, and also
quest!o„rUn S'nt 11,0 °bj00ti0n t0 11,0 ,M‘ l,r000|bng
cause, m putting him before the Court ns a l™, 1 J°‘
1824 an error in regard to^tho mnttw° ^ tImt 1,0 lms 'n!K,° i
credibility in any senso. Vbf* d°°3 1,ot eiIect
(Plaintiff’s counsel except)
A. Ho did not
on Uia™, Sr° 09aV°rSati0,,S With ^ Sorrell in 1878
thos^e'COTvo^lt[0°^COt 10 tbat <Plcsti°11, I did not put i»
1125
that in 1876, ho cc
panoy. By W“y °f a P0S3iW° explanation of a discro.
Ur. Dickerson ; In that point of viow.
^ » insisted upon I will ex-
Mr. Lowrcy : For the purpose of placing tlio matter cor- 1326
rcotly upon tlio record, I suggest that we read tlio testimony
of Mr. Serrell to the witness and ask him whother, substan¬
tially, tlieso statements wore over made to him in connec¬
tion with the statement that wo propose to prove, that the
conversation referred to by Mr. Serrell took place in
1875.
Q, I hand you the printed roeord of Mr. Sorrell's testi¬
mony upon this point and ask you to read from page 74.
(Witness rends same.) Did Mr. Sorroll over liavo any
conversation with you substantially, such ns is testified to 1327
by him upon page 74 of the prinlod roeord, folios 298 to
296, and if so, when?
The Court: You don’t propose to contradict Mr. Sorroll?
Mr. Dickerson : Not at nil.
A. I did not hnvo a conversation with Mr. Sorroll at that
Mr. Butter; I think this ovidcnco is objectionable. 1828
The Court: Mr. Sorroll has testified to a conversation as
having occurred between himsolf and this witness. Ho has
fixed tho time with reforonco to a particular dato ; now they
propose to show not that tho conversation did not occur, but
that it did occur at a different timo from whioli Mr. Sorroll
bas fixed it in his testimony.
Mr. Butter : I do not think that is objectionable. ■
1329
A. I had a conversation with Mr. Serrell, I should think
somowhoro about tho 15th or 20th of January, 1875, in
which tho subject of those contracts with Mr. Harrington
was discussed.
By the Court:
Q. The contract between Edison and Harrington?
i
327
Snf 1, r ?T°n •' T°“ lmvo ro“d thh statement of Mr.
Send of wlwt you said; you said the contract only Cov-
ered tho automatic; Mr. Serrell states: « Q. Wliut was Mr
Preseotts answer? A. Substantially, that the contract re-
infe to automatic telegraphy Imd nothing to do with
tins matter,” namely, with his contracts. Did you „ . ‘
such a statement ns that to Mr. Serroll ? *
1JJ81 -A. I think I did, substantially.
Ur. Butler : I must object to tl.is testimony.
hikon. It will bo for the Court to , M 1 resooU 18 ,,lis'
332 surrounding otauntatane^^STltT 1,10
which of the witnesses is in error I thi,Tk It 1°' "• °
impeaching Mr. Sorrell at all »r - ‘.orror' Wltl,0ut
lotion of his oath. ’ ollIlr8,,1S % With a vie
(Plnintiff’s counsel except.)
Q. In what year wns that?
133 A- I» 1875.
A. I think about fo ty7v0 01l0‘rOU^’ “boU,'?
, Q- You are working som0 0lf ^'Skt circuits,
the Hughos-Pholps’ maehino? bos° 1,1 connection with
(Objected to as leading.)
Phelps’ machhio ?0rk,Pe ** comiectiou with tho Hughes-
A. Yes, sir. 1334
Q. How many words a minute go over tho lino with
tlioso machines ?
A. About fifty-five words a minuto to each machine — tho
Phelps' electro-motor printer.
Q. Do you know what is called tho Domestic Telegraph ?
A. I have heard of tho Domestic Telegraph Company ; I
am not familiar with tho maehino.
Q. Do you know what the machines are — what the class
of maehino that tho Domestic Telegraph use is?
A. Automatic. 1835
Cross-examination by Mr. Butlor.
Q. Will you have tho kindness to toll mo the earliest
date that you can remember when you heard from Mr. Edi¬
son, or from Mr. Edison's inventions, that ho proposed to
put two messages over tho samo wire each way, at tho same
time, in opposite directions?
A. My earliest recollection of his using tho torm, or of
hearing it described - 1336
Q. I don't ask you for the uso of tho torm — I ask you for
tho fact?
A. I don't, at this momout, recall anything boforo Juno
21st in that paper which wo liavo just road.
Q. Will you tax your memory ns well ns you can and
see whether you don’t recall that you hoard of it oarlior than
that; I am anxious to get it earlier if I can?
A. I don’t recall anything at this moment
Q. You had never seen it done, had you, prior to that
timo ; nnd if so, who did it, and when ? 1337
A. No, sir; I novor saw it done boforo that
Q. I don't now rofor to working on tho line — whether it
wns working on a line in the course of business on a long
or a short circuit, but experimentally ; did you ever see it
done in that way ?
A. I don't recall tho circumstances ; if I have, itliasgono
from my memory.
Q. This contract of Juno 21st, or memorandum of agree-
moo moot, Exhibit 44 , was first written apparently all down to |
tlio signature, and then this memorandum was added :
(Reads memorandum at the bottom of Exhibit 44.)
I want to ask you what was the condition of that pape
when you first saw it — wkethor that was tlioro or not t
A. My recollection is that it had it in.
Q. When you first saw it?
A. Yes, sir.
Q. How is your recollection upon that question— pretty
1389 clear?
A. Yes, sir; I should think so.
Q. Who first suggested that this paper should bo drawn
—that is, did Edison come and oiler it to you without sug¬
gestion, or did you suggest that somo paper should bo
drawn?
A. I hnvo nothing in my inomory which would guido
mo ns to that.
Q. You don’t remember?
A. No, sir.
^0 Q. For aught tlioro is in your moraory to tlio contrary,
Mr. Edison came and brought this paper preoisoly as it
was when you saw it?
A. That is, as I recollect ; yes, sir.
Q. So lar ns this papor was concerned, there wore no
alterations tnado upon your suggestion whatever?
A. None that I recollect.
Q. Had there been any previous talk botwoon you and
him about having somo paper drawn?
*®“ A. I don’t recollect any.
Q. Without recollecting- tho talk, do you recollect tho
fnot that there was any?
A. I don’t remember anything at all about it.
Q. Now, sir, precisely what was said upon tho occasion
of this paper being drawn — of courso, I don’t ask you for tho
words, but substantially ?
A. I don’t recollect anything except that at some time,
whether it was at the time it was drawn, or within a few
days, I said -
Q. I only ask you what you can remember ns to what 1342
took place at the time ?
A. I don’t romembor anything at all that took place at
the time.
Q. Do you remember anything that was said about it
now until tho contract of July 9th was drawn on that occa¬
sion, and if so, who began tlio conversation ?
A. I don’t remember any spccilio time that tho conversa¬
tion took place ; I remember saying to him, in substance,
that -
Q. I don’t ask you that now— without asking for tho 1343
specific time, do you remember any conversation upon the
subject of this paper until tho occasion when tho contract of
July 0th was drawn?
A. I cannot recall any conversation about it.
Q. Nor tho fnot that you had any until that timo?
A. No ; I don’t remember.
Q. I wish you would think of it carefully, so I can ex¬
haust your memory ?
A. I can’t squeeze anything more out of my memory
than I hnvo givon. 1®^
Q. Now, you got a letter or exhibit, whicli was shown
you, dated May 10th, 1874, which I will rend. [Heads
same.] How soon after you got that letter before you sent
for Mr. Edison, if you did send for him ; or did ho como to
you?
A. I sent a telegram to Mr. Edison, accepting that pro¬
position, on the first day of June, 1874.
Q. Have you that telegram ?
A. It was in tho package which Mr. Lowroy lias unfortu¬
nately misplaced. 1816
Q. Wasn’t it proservod on your books?
A. It was a lctter*press copy. I sent out to Newark and
got it from tho operator in cliargo of tho oflicc there. I sent
for a press copy of tho message that had been delivered to
Mr. Edison. I had it in court, and it was among the papers
which Mr. lowroy had, and which hnvo been lost or mis¬
laid.
Q. I suppose ho had a press copy in a book, didn’t he ?
Wasn’t it put in a book ? 42
830
1346 A. No, sir; they take them on tbin slieots of paper for
filing in tho office.
Q. Between Ike receipt of tlic letter of May 19tli, and
your telegram of June 1st, did you see Mr. Edison in tho
meantime?
A. No, sir; not from the time I received tlio letter until
I sent the telegram.
By the Courts
1347 Q. Do I understand you to say that tho copy you re
eeived from the operator in Newark was the original pres,
copy taken from the message at tho lime, or a copy of tin
press copy ? 1 J
renfiv:jT^1>rOSfCOiIof 11,0 oriei,ml that the opcmtoi
re e,ved :.t Nowarl Ihe original uas delivered to Mr.
received* 1 h'8 WM n )’ross copy of tho message
received in Newark, and sent to Mr. Edison.
, « Jr? *iw * ~ »• ■-» «** ■“
I848 riot.11 "'"8 “ d0S1,‘“0h 10 Mr- Edison ncc°I)tine his propo-
thnUvTs mkc? f?Tld.rCC0iml a P^ss copy of tho message
that was taken at tho timo to bo filed in tho offioo?
1 es, sir; precisely.
ou Riot'd tl,0r° h ”0W in Nowwk copy of that despatch
A. No, sir.
-By Ur. Duller.
lm tiS'JS' ,0* ',k" * *W « “» *—«• I— I.
Q- You cannot find the original?
N^;cL:,dtdt.to flnd tbo ‘,iat - - *
nm! g0t * press copy “f «>o message that was
received at Newark, which you say, unfortunately, hi bleu
A. Yos, sir; it was among tho package of Mr. Lowrcy’s 1350
pnpors that lias either been lost or mislaid.
Q. You did keep tho original at tho sending oflice. but
when you camo to look for that you found that gone, and
then you got a press copy from Newark, and for soino rea¬
son that is gone, too ?
A. Tho press copy I delivered to my counsel, and it was
in his bag.
Q. When was this sent for?
A. It was sont for sinco tho commencement of thoso
Gould-llnrringlon proceedings; I cannot toll positively 1351
wlion ; it was sont for sinco tho outbreak in 1870, 1 should
say.
Q. Can’t you put it any ncaror than that ; wasn’t it sont
for sinco this trial began ?
A. No, sir; I had possession of it a long timo boforo this
trial begnn.
Q. Did you hand it to your counsel sinco tbo trial began ?
A. No, sir ; I handed it to my counsel somo little timo
ago.
(Bcccss.)
Q. I want to ask you a question furthor to soo if I oan
trnco that note of noooptanoo. Lot us soo if I understand
tho praotioo of your office as to telegrams sont by tho offi¬
cers of tho compnny. Is it not tho praotioo alter tlioy nro
sent to tho operator that thoy should bo returned on the
same night, or immediately in tho duo eourso of business,
to tho office from which thoy oomo ?
A. Tho custom is to send thorn to tho officers of tho com¬
pany on tho following morning.
Q. That is, thoso which go from the electrician’s offioo
come back to his offioo and are by him put on file, and those
that come from tho superintendent’s offioo oomo back to his
office and arc by him put on file.
A. Thoy oomo back to him. I only spoak for myself.
832
1854 As a tuIo my own despatches linvo not been filed. There
are some exceptions to it. If they are important despatches
I would put thorn up in the envclopo of the day.
Q. Important despatches aro kept by you ?
A. Tliero is no special rulo about keopiug them. I do
keep some despatches. I have some that I kept.
Q. You have since found among your despatches tlio
original of this one ?
A. No, sir; I looked for the original one, and, not find¬
ing it, I sent to Newark for tho press copy.
Q. You looked among your own papers— tho papers in
1855 your office?
A. I Iookod in ovory box and file and ovory plnco whore
I would bo likely to find it.
Q. Did you look on tho general filo of the offico or only
in your office?
A. Only in my ofiicc.
Q. So, if it had not been transmitted to you it would re¬
main on tho goncrnl files of tho oflico ?
1850 Q- That would bo a pretty important despatch wlicro
you had sont your aceoptanco of a contract, and would bo
likely to bo kept ?
A. Woll, if I had known what was to come out of it, it
might have been. If I had known tho importance which
might bo attached to it in tho future it might have been. I
didn't think so at the time, an:' I didn’t keep it-
Q. You have no remembrance about keeping it?
A. No, sir, none whatever. I could not find it and I
sent to Nowark for the press copy.
1857 Q- Now, returning to the original of this paper for a mo¬
ment : did you say it was handed to you without a word
being said and kept by you without a word being said until
you made the contract of July 9 th ?
A. I don't remember anything being said about it.
Q. I say, so far as you know. Can you tell mo when
you saw that last ?
A. Which do you mean ?
Q. The original of this. (Referring to exhibit -44.)
A. I can’t toll preoisoly ; I think somo time since this 1<
trial commenced.
Q. Did you look at it carefully ?
A. I don’t recall looking at it more carefully than othor-
"'q. Can you tell whethor the addenda which appear in
the photograph all of the same color, were written with dif¬
ferent colored ink from tho body. Of course it will appear
in tho photograph of tho same color ?
A. No, I think not. They linvo colored inks which ap- ^
pear in different colors.
Q. But in a common photo-lithograph do they not always
appear black?
A. I have no recollection, at all, about that.
Q. You don’t remombor whether that wn3 different colored
ink or not ? .... » ,-r
A. I can’t toll, I havo no reason to think it was ol a <m-
foront color. '
Q. I ask only whethor you linvo any romombrnneo t
A. I havo no romombrnneo at all about it.
Q. But you have a distinct reoollcction, howovor, that t
tho addenda woro on these, when you first saw this paper?
A. I think so. ,
Q. Do you havo such a distinct rccollcotion t
I A. That is my recollection, that it was thore, just in that
shape that you see it now wlion I had it first
Q. Why did you not return this pnper after substituting
the agreement for it of July 9th ?
A. Well, I don’t know, I am sure ; I don t know
whethor I had any reason why I should or should not.
Q. Did Mr. Edison linvo any copy of it?
A. I don’t remember whether he had a copy or not.
Q. Toll mo whethor, in the courso of these negotiations,
at any time, you went to Mr. Soren’s office with Mr. Edt-
A. Yes, sir; I did. ,
Q. Were you there more than onoe with Mr. Edison ?
A. No, sir.
Q. About what timo was that, if you remember t
1302 A. I cannot fix upon tlio (Into precisely ; I should think
somewhere between tho 1st of July and the 9th of July,
1874. ' ,
Q. Where did you start from to go thoro t
A. I started from my office.
Q. Who was present at your office when you started ?
A. I cnn't remember.
Q. Well, without remombering all, was Mr. Orton
A. No, sir.
1303 Q. What timo in the day was it?
A. I hnvo nothing to fix tho timo of day ; I don’t «•
member.
Q. In tho morning or nltomoon ?
A. I can’t toll whether it was morning or afternoon ; if I
should state, I would hnvo to guess at it
Q. I find tho first exhibit made by Mr. Edison, asking
for something to experiment with in Juno, 1874,
dated Juno 12th?
A. Juno 10th is tho first.
1 Q. Tito order was tho order of Phelps; and I romotnbor
it ns Juno 12th?
A. Thoro is an carlior one than that
Q. Wont you find it?
(Witness hands paper to counsel.)
Q. This is a caveat ?
A. No, sir j that mark at tho top is a ponoil mark and
not a part of tho original. It says “ 99, 100 and caveat
5 58." It alludes to the oases in which tho fees shown hero
arc indexed.
Q. Who put it thoro?
A. That is in Mr. Smith’s liandwritipg.
Q. Tho gentleman who was herd yesterday on tho
stand ?
A. Yes, sir.
Q. Tho assistant eleotrieinn ?
A. Yes, sir.
Q. Mr. Edison’s name docs not appear hero that I seo?
A. That is a specification by Mr. Edison, in his hand- 1386
writing, which ho handed to mo, and which I endorsed on
the back and sent to our superintendent to hnvo manufac¬
tured. The ponoil marks were not on tho originals. They
re memoranda made since.
Q. Then, that which reads, ‘'case 99, 109, and caveat
8,” did not belong to tho original at all ?
A. No, sir.
(It was agreed that tho pencil marks should be stricken
| out.) 1367
Q. Then Juno 10th was the first one?
A. June 10th was tho first ono of this series. That was
the first that Phelps was ordered to mako.
Q. Was this tho first that was mado by anybody in tho
Western Union ollieo?
A. There wero somo mado tho yoar previous.
Q. I am not talking about tho yoar previous, I moan fit
| June, 1874?
A. Oh, yes ; I think that was tho first ono mado. 1368
Q. llnd Mr. Edison gone to work in your olfioo boforo
his was made, to mako oxporimonts — I moan in Juno,
1 1874?
A. No came over, I think, tho first of Juno, as soon as
j ho got my telegram, lie came right ovor and wont to
Q. Did he bring any instruments with him, or did I10
wait for thorn to bo mado ?
A. I think ho brought instruments with him.
Q. Arc you sure about thnt ? 1309
A. Not absolutely sure, but yet tho impression is vory
strong in my mind that I10 did.
Q. How long was it before this was done— a weok or
(two?
I A. I lmvo Mr. Phelps’ memoranda here, which seem to
bo Juno 26th. .
Q. You are now looking on tho account which Fholps
gave you ?
A. Yes, sir, thnt which he furnished mo.
836
1870 Q. This wns delivered to liim to experiment with on tho
• 25th of June. I find ono of Juno 12th. Can you tell mo
when that was delivered?
A. I cannot locate them by the papor. Tlio difficulty is,
it simply Eays on the bill, a certain number of experi¬
mental instruments for Mr. Prescott, on his order. It does
not say when the specification was sent nor anything about
it; and there is nothing that an electrician can have to
guide him any more than anybody else.
Q. Take the ono or Juno 12th. “ You will please make
1871 four instruments, each after the enclosed drawing and speci¬
fications,” and here they are pictured out Toll me what
the name of them is 7
A. I find on tlio entry here, “ July 14th, four oxpori-
I mental instruments for Prescott, on his order and specifies-
Q. Is there any other four than that that you know of?
A. I don’t see any other four.
Q. You locate the four spoken of there, as these four?
A. It says four here, and it says four on tlio 14th of
72 July.
Q. Would that bo about the prieo of thoso things ns
stated there?
A. Yes, sir, I should think so.
Q. kook at the next, which I think is the 15lh of June,
11 You will please make five instruments, ono each after tho
1 enclosed." Toll mo when they were delivered ?
A. I see a charge hero of July 24th for five instruments.
Q. You told mo when Juno 10th was?
A. Juno 2Clh.
1878 Q- The second one of July 12th wns July 14th. The ono
of Juno 15th was July 24th. Then there is one dated hero
July 18th, is it not?
A. Yes, sir.
Q. That is all I want for my purpose. When were tho
ton models asked for?
A. On July 10th I seo eight models charged for.
Q. They were asked for July 2d, wero they not. Your
order for some of them was given July 18th ?
A. There seem to be seven models here, and thcro seems
to Be one marked model A. Now, the first eight models and 1374
specifications do not seem to have any endorsement on them,
and the modol A is the ono that you allude to, which is
July 13th.
Q. 'That could not have been done on the 10th.
A. No, there is ono ono on tho 81st, which probably cor¬
responds with that.
Q. Can you say that a single ono of thoso models was
ordered boforo tho 13th of July?
A. I don’t know anything about those models — when
they wero ordered, oxcopt that ono which is dated July 1875
13th, and lias my namo on it ; they wero ordered by Mr.
Edison ; ho wont himself to tho shop and ordored them,
and had them delivered to Mr. Sorrell.
Q. Will you tell mo, when you went to Mr. Sorrell’s
office, whether Mr. Edison had informed you that thoro
might bo some trouble in your being a joint inventor?
A. I have no recollection of his saying anything about
it.
Q. Why did you go to Mr. Sorrell’s plaoo at that timo?
A. My recollection is that I received notice that tho np- 1876
plications prepared by Mr. Edison and Mr. Sorrell wero
completed and ready for my inspection.
Q. Through whom did you receive that notice?
A. I have not a very distinct impression ns to whom, but
my impression is that I received it from Mr. Edison.
Q. l)id you accompany him?
A. No, sir.
Q. You then went yourself?
A. Yes, sir.
Q. Had you boon to Mr. Serrell about these matters bo- 1377
fore then ?
A. I hnvo no recollection of having boon at Mr. Serroll’s
place at all during tho progress of the matter.
Q. Except this timo?
A. Except this timo; I mean before this time.
Q- I mean within a few days boforo or a few days after,
or say botwoen tho 9th of July and tho 20th of August, so
as to cover it — wore you thore but once ?
48
>r applications.
18 A. I liayo no recollection of being there.
Q. Butonee?
A. 'Well, I was there some whore about the 19th of
August when I had the conversation with Mr. Sorrell
about the joint invention ; I was there that day or the next
day, or somewhere in that vieininy, with Mr. Edison.
Q. On that same day? |
A. On that samo day ; yes, sir ; I can’t toll exactly when.
Q. Then there wero occasions when you wore there; first,
just boforo or on tho samo 10th of August, alone, ami then
’9 on tho samo 10th of August nlono or with Mr. Edison—
both on tho same day ?
A. Two occasions.
Q. Please toll mo precisely what you first remember was
said when you first went into Mr. Sorrell’s plncc, or that was
said to you wlion you wero nlono?
A. I don’t recollect what was first said.
Q. I want tho first that you do recollect.
A. I think Mr. Sorrell showed mo papers
Q. What was said thnt you remember ?
0 A. I can’t remember the conversation that onsued about
Q. Give mo tho first thnt you do remember, if you re¬
member nnything ?
A. ihc thing that fixed itself in my mind was tho re¬
marks about Mr. Edison having made somo applications
previously. 1 1
Q. Through Munn nnd Company?
A. I think so, and Mr. Scrroll saying, substnntinlly, that
it lucre was anything contained in those applications which
II was reproduced in these, it might bo a cause of legal com¬
plications hereafter.
sol? before US” ** ^ ^ aPPlications y0UI"
A. No, sir ; I hadn’t either before or afterwards:
Q. State wlmtclee was said?
Vn" aSl^Cd him Whnt constituted a joint inventor
substantially, and Mr Sorrell gave me his views about it.
Q- And you said if his views of tho law were correct you
wero not a joint inventor? J
A. Yes, sir ; according to what I understood him to say 1882
in regard to it, I was not a joint inventor.
Q. Thou did you ask him to rodraw the contract of July
0th?
A. My recollection is, that I asked him how I could so-
euro my rights in the invention ; ho saiil substantially, that
Edison would assign mo half his interest.
Q. What elso was said tlion— anything more; did you
direct him to redraw tho contract?
A. I said substantially that I should decline to sign any
of tho applicationsas a joint inventor ; I think tho matter was 1888
loft thoro until I saw Mr. Edison and explained to him tho
situation.
Q. Was that all that was said at that timo that you ro-
member?
A. I don’t recall at tho moment anything elso.
Q, You went then to soo Edison ; you found him, I sup¬
pose, at tho ofiicc ?
A. I went back to my offico, and I don’t know whothor I
found him there, or whothor ho subsequently camo in ; at
any rate, I did soo him subsequently. 1384
Q. Immediately ?
A. That I can’t toll ; I should think so ; that is my recol¬
lection.
Q. Whnt is tho first thing that you romcinbor you said to
him when you saw him ?
A Well I told him whnt -
Q. Tell me what you did toll him ?
A. I cannot toll you that, it is so long ago.
Q. Toll tho substanco of it ?
A. I told him in substance what occcurred between mo lsg5
and Mr. Sorrell.
Q. Purdon mo— whnt romainod in your mind that you
told him ?
A. I think I told him what occurred between mo and Mr.
Scrroll.
Q. Whnt did you toll him— what do you romember that
you told Mr. Edison ?
The Court : What did you say to him ; give tho conversa¬
tion substantially as it occurred ?
840
841
A. I can only say this that my recollection is that I told
Mr. Edison substantially that I had a conversation with Mr.
Scrrell ; nttd it did not appear from that conversation that I
was entitled to take out the patents as joint inventor.
Q. Stop a moment. When you said you told him that
conversation, please say, Isay to Edison this; I said Mr.
Serrell snid this and I said so and so ?
A. Ishouldbo lmppy to oblige you, but that is absolutely
impossible.
. Q. Then it is impossible for you to toll what you said to
him, except you snid something of the conversation that had
taken place between you aud Serrell.
The Court .- It would bo impossible for him to say that,
if it was not said. I do not understand the witness to say
that ho did detail to Mr. Edison, in the form which you
suggest the detailed conversation — I snid this, and Mr. Sor¬
rell snid that. lie states, generally, ho told him what oc-
occurred. I want to got the langungo usod in telling
Mr. Butler: Q. Will you say what you did say to Mr.
Edison, exactly ?
A. My recollection is that I told Mr. Edison that I had
been to Mr. Sorrell and had a conversation with him, in
relation to the joint inventorship — taking out these patents
as joint inventors— and that it appeared from what Mr. Sor¬
rell had snid, that I was not legally a joint invontor ; and
that Mr. Serrell had suggested, in answer to my inquiry,
that Mr. Edison could take out tho patents ns inventor, and
assign a half interest to me. That is substantially as I re¬
collect it. Wc went down to Mr. Serrell.
Q. Hint was all that was said. Did Mr. Edison assent;
and, if so, in what words?
A. I don t recollect tho words ho used ; I think lie a
sented to it.
Q. Ho assented to it in some form of words you do n
recollect ? J
A. Yes, sir.
Q. Then you wont right down to Mr. Sorrell ?
1
A. I can’t toll whether wo went right down then or tho 1390
next day.
Q. Within a very short time ?
A. Yes, sir.
Q. Plcaso tell mo what was said when you got down
there tho second time, and the only other time— the first
thing you recollect that was said by anybody?
A. I only reoollect, in gonornl torms, that wo wore there
to mako nnothor contract.
Q. That is tho first thing you find in your mind on tho
subject. In general terms, you said you were there to make 1391
another contract. Who spoke then ?
A. I don't know who spoko first nor who spoko last. I
only know, in goncral terms, that wo wont down there to
make another contract to take tho plaoo of that, and there
as a discussion ns to whether there should be any inodifi-
lions in tho contract. Mr. Serrell suggested that tho
clauso whore one could not sell without tho consent of tho
other, ought to bo changed, bceauso it might bo that cir¬
cumstances might arise which would mako it inconvenient.
I acquiesced iu tho suggestion, and Mr. Edison dcclinod to
have it changed.
Q. Can you romomber anything else that w
A. I don’t recall anything.
Q. Nothing further then was said that you remember?
Did you and Mr. Edison go nwny togother?
A. I don’t know.
Q. Was tho now contract signed then?
A. I don’t romomber.
Q. Whore did you sign it when it was made ?
A. I think I signed it in Mr. Serrell’s office.
Q. Did you and Mr. Edison sign it at tbo same time, or
at different times I
A. I don't remember.
Q. How sure are you that you signed it at Mr. Serrell s
office?
A. I don't romombor anything that fixes it particularly
in iny mind.
Q. Who was present whon you signed it; who witnessed
it?
is said?
Mr. Sorrell ?
842
1894 A. I cannot toll unless I sco tlio dooumont
Q. You would not know then whether ho was present
and witnessed it, even i£ you saw the namo?
A. No, sir.
Q. Did Mr. Sorrell come to your office and witness it?
A. No ; I have no recollection of over seeing Mr. Sorrell
at my office.
Q. Have you over paid any money to tho Western Union
Company, on account of these inventions?
A. No, sir.
1895 Q. Have you paid any for them ?
A. Paid any for whom.
Q. For tho Wostorn Union Company ?
A. I think not
Q. Ifavo yon received any from them?
A. I received $6,000 from tho Western Union Company.
Q. When?
A. I think tho 19th of January, 1875. I could tell ex¬
actly hv my bank book.
Q. Did you on tho snmo day sign a rccoipt, which is here
1890 as an exhibit ?
A. I think so.
Q. Have you received any other?
A. The Western Union Company has advanced me
money.
Q. What, sir?
A. Tho Wostorn Union Company has advanced me
monoy to meet certain legal expenses connected with those
matters.
Q. Other than legal expenses ; I suppose they did not
1897 advance it to you, but to your counsel?
A. No, sir; thoy paid mo the monoy, and I paid tho
counsel myself.
Q. What, sir?
A. I paid tho counsel.
The Court : It passed through your hands ?
A. Yes, sir.
Q. They paid you, and you paid them ?
848
A. They let mo have tho money and I paid somo counsel 1898
fees.
Q. Other than that, have you received any?
A. I received some monoy from them to pay Mr. Sorrell’s
hill, 'if that is what you mean— nothing besides that
Q. Now, directly or indirectly, leaving out the sums that
you have told us about, have you received anything from
the Wostorn Union Compnny, on account of these inven¬
tions, or paid them anything?
A. I received $5,000 from the Wostorn Union Company.
Q. I sny leaving out tho sums you have mentioned ? 1399
A. I don’t remember anything olso.
Q. Ccrlnin facilities havo been shown to Mr. Edison for
testing his experiments on the wires, and certain mattors
have been inndo for him ; wns that nil done at tho solo ex¬
pense of tho Western Union Compnny ?
Q. And thoro wero certain operators omployed. Woro
not those operators at the oxpenso of the Western Union
Company ?
A. Tho Western Union Company paid tho bill. 1400
Q. Everything? Then, havo you any other claim ns
consideration paid for this agreement of August 10th, than
what you aided Edison from tho 10th of Juno until tho 10th
of July ?
Mr. Lowrey: How does tho limitation come in— to limit
tlio services or to limit tiio payment I object to tho ques¬
tion, on tlio ground that tho plaintiffs complaint alleges
that Prescott did, under this agreement of August 19th,
pay certain patent fees, as stated in tho 28th folio. That is 1401
one of the facts admitted in the pleadings.
(Objection overruled.)
Q. Now, sir, after hearing what tho counsel has read to
you, do you want to change that you have not paid any¬
thing else — that you havo paid anything ?
A. State what tho question is?
Q. This is the question. You heard that tho counsel
815
1402 rend from the complaint. You have testified that you paid
no money of your own at all, but have reccivod §5,000.
Do you want to clmngo that?
(The form of the question was objected to, ns embracing
an untruth.)
Q. Have you paid anybody else anything on account of
these inventions — lmve you paid mortal man or woman
1403 anything, except what you have already stated ?
A. I paid Mr. Sorrell the patent fees.
Q, We hnvo heard that — and tho lawyers?
A. Yes, sir.
Q. Ilavo you paid anything else othor than you havo
stated ?
A. No, sir; I don’t think t have.
Q. Think now, so that wo shall not hnvo to go over this
again ?
A. I have thought.
Q. Then you have not paid anything else ?
A. T think not
1404 Q. For this half of tho invention, havo you paid any¬
thing to Mr. Edison, except your services, whntover they
might bo worth, Juno 21st to July 10th ?
(Objected to, so as far ns it assumes to hind tho witness to |
I thoso dates. Objection overruled.)
Q. Havo you paid anything for one half of thoso inven¬
tions uxcopt your sorvicos between those two dates ?
A. My services extended from tho 1st of June to tho 31st
1405 December with Mr. Edison.
Q. To Mr. Edison ?
A. In connection with Mr. Edison, in developing this
qundruplex.
Q. But, pardon me; you got the invention on tho 9th of
July, and that corrected agreement on the 19th of August?
A. Yes, sir.
Q. When you got that on the 19lh of August, liad you
paid anything hut tho services rendered up to the 10th of
July, when it was published that so good a thing had hap- 1406
polled ?
A. These services in connection with tho quadruplox
continued all tho way along.
Q, The services to Mr. Edison ?
A. In connection with Mr. Edison and the quadruplox.
Q. During all the time wero you drawing your pay as
oh clue a i of the Western Union Company?
A. Yes, sir.
Q. What?
A. What is the question ? 1407
Q. During the wholo of that time, longer or shorter, wore
you not drawing your regular pay as electrician of tho
Western Union Company?
A. Yes, sir; and drnwiug my salary as clcctrioinn of an¬
other company besides.
Q. What was Hint— tho Gold and Stock ?
A. I don’t think I draw any salary from tho Gold and
Stock ; I was vice-president of that company ; I was draw¬
ing salary as electrician of tho International Ocean Com¬
pany. 1408
Q. I desire to ask you when you first nskod tho Wcstorn
Union Company for $5,000?
A. 1 don't know precisely when I got the §5,000; if I
had my bank book here, I could tell when it wits deposited;
I got it ns scon as I asked for it.
Q. Wo Imvo your receipt for it hero.
A. Then that will show.
Q. It is January Kith on that receipt.
A. Yos, sir ; that must Imvo been when I got it.
Q. You got it as soon as you asked for it, without any 1409
delay ?
A. Yes, sir ; it might havo been a day or two afterwards.
Q. You never did ask for it as early as tho 10th of De¬
cember, did you ?
340
347
1410 A. Yes, sir ; I never askc.l for it until I got it ; when I
asked for it I did got it. ...
Q. You never made any claim until you got tlio claim
answered in other words; is that so 7
A. I never asked for tho money until I received it.
Q. Hr. Edison got his on tho 10th of December?
A. Yes, sir.
Q. Now, did you a
Edison got his, put in
ir about the same time that Mr.
lur claim, and say “Give me my
Q. Did you over tell Mr. George B. Mumford, your vice-
president?
A. Georgo II. Mumford?
Q. Your vice-president; what was liis name?
A. George II. Mumford, now deceased.
Q. Did you over toll him that you wanted your money at
the time that Mr. Edison had bis?
2 A. No, sir.
Q. And that you ought to have it?
A. No, sir.
Q. And in consideration of that they afterwards paid
MS Q. Suppose yon turn your attention to another matter
DM Ditl you over slate in the fall of 1874 or any time between
\ rH ^,c l*1 July or tho 30tli of December 1874, that you
j-, 3/ had been notified that Harrington claimed the duplex and
"‘£i5*if’-^13 quadruples?
A. No, sir.
A. Or any portion of Mr. Edison’s inventions?
A. No, sir.
Q. Didn't you stato that you had been notified by any¬
body — I don't now hold to Harrington — that Harrington
did so claim ?
A. No, sir.
Q. You lmd no idea that he did so claim?
Q. You mado no inquiry on the subject ? 1414
Q. Did you ovor go to Edison at that time and. say to
him “ Why, I have been notified by Craig,” or “We have
been notified by Craig,1' or words to that effect that Harring¬
ton claimed your inventions ; what do you say to that l
Q.' AnddUln’t Edison turn to you and say “ 0, nonsense,"
to Craig's claim ? .. 1415
A. I was notified that Craig, or not notified, I was told as
a rumor that Craig had a contract with Edison, and that lie
might put in a elnitn-not that he did claim— to those in¬
ventions after ho had got them fully developed. I told Mr.
Edison that, and Edison said “ nonsense," and said he liadn t
any contract with Craig at all, except for automatic, and
to was never carried out There was never any contract
*' Q. Did you hear of the service of the notice on tho Wes¬
tern Union Company ? 141Q
A. What service? , _ . TT .
Q. The service of Craig’s uotico on the Western Union
Company of his lawsuit?
A. I heard it yesterday in court.
Q. Was that tho first time?
ft What time was it that you told Mr. Edison about tho
rumor you had heard? , , , , .
A. I fix the date this way : there was an article published
in tho Telegrapher in tho latter part of September, in w
my name and Edison’s were mentioned rather unpleasnn y ,
I went around to see the editor of the paper, and had quite
a conversation with him. .
Q. Pardon me; I don’t want to put in tho conversation
of the editor of the paper?
2?ic Court: What was the date?
A. It was early in October, 1874, after tho publication of
this paper.
Q. Sometime in October, 1874?
A. Yes, sir.
Lg Q. Can't you put it uciore mo tutu i
A. I should think it was before the 10th ; I could fix it
if I had tho Telegrapher hero ; I can got that ; as soon as the
paper was published I wont around and saw the editor.
Q. Is that tlie rumor you heard ? <
A. Yes, sir? it was a rumor from the editor of the paper.
Q. IVas that the rumor you referred to, to lidison?
A. Yes, sir; he said lidison had contracts with Torn
Dick and Harry ; 1 asked him whom he meant by Tom,
Dick and Harry? lie said -
19 Q. Pardon 1110 ; I don't want that.
A. Excuse mo, I thought you asked for it.
Q. Was the rumor which you referred to when you spoke
to Edison what you had seen in tho 'Telegrapher ?
A. No, sir; what the editor of the Telegrapher told me as
a rumor that lie hoard.
Q. That is what you roforred to ?
A. Yes, sir.
Q. Was that tlie same thing which was in his article?
A. No; his article was sort of abusing Edison and my-
jO self forgetting up tlie qundruplox.
Q. You are sure that Harrington's claim was not men¬
tioned in that conversation ?
A. Yes, sir.
Q. Did you know that Edison had been nt work for tlie
Automatic Company or associates ovor in Newark, and
when did you first know that ?
A. I saw Edson in tlie automatic office in January, 1873,
I think, showing off tho nutomatio ; and I got the impres¬
sion from somebody that ho had something to do with it.
11 Q. When did you first learn that ho was at work for
the automatic people ovor at Newark making machines— I
don't care when he was attending tlie office; when did you
first have any information on that subject ?
A. I don't recall anything earlier about his making ma¬
chines for tlie automatic until I wont over lo Newark to
find Edison ; which was in January, 1875.
Q. And you hadn’t learned dial he was there doing any¬
thing over in Newark until 1875?
A. I know he had a shop in Newark, but I didn’t know
that ho was making anything for tho automatic.
Stock Company.
- Q. Will you no
or know that ho w
down to 1875?
toll me whethor or not you ever heard
i engaged with tho automatic company
A. You want something that was told mo or my impres¬
sions, or general idea?
Q. Somebody had given you tho information that ho had
something to do with the automatic?
A. I was told as early as 1873 that ho had made an 1-123
auto natio perforator.
Q. For whom 1 tho Automatic Company 1
A. It was used by tho Automatic Company.
Q. When did you learn, if ever before 1875, thnt'ho had
connection with tho Automatic Company, or some interest
in it 1
A. I saw him in tho nutomatio offieo in 1873, and I knew
that lie wont to Europe to show tho automatic there in
1S73. I don’t romoiiibor anything olso in connection with
it?
Q. Did lie como to you nbout raising any money in July, X.y2-1
187-1, or aiding him to rniso money t
A. Ho came to mo in 187-1, 1 think, wanting to getsomo
money.
Q. When lie wanted $10,000 ?
A. Yes, sir.
Q. What did ho offor to pledge.
A. Ho olfercd to pledgo tho machinery in his shop that
ho had over nt Nownrk.
Q. Did lie offer to hypothecate anything olso?
A. Not that I know of.
Q. Did he not oll'er to hypothecate or pledgo his interest 1425
in tho automatic ?
A. Not to my knowledge.
Q. Did you not go down with him, and ho or you tako a
paper down to Mr. Sorcu to seo whether that paper was
a good one to secure his interest in tho automatic to you or
anybody else !
A. No, sir.
Q. And that 0110 of tho firm of Messrs. Lowroy and Tortcr
t, agreement or understanding directly
my interest in these inventions,
ever they liavo is in the omnibus hill tl
of Mr. Orton’s proposition by me. The;
i on this trial ; nothing clso but that,
t did the question of brother Dickerson
ml when lio asked you if any iudividun
id any interest with you in the Wester
n these inventions except Edison ?
moil : In his rights under the contract,
interest tindor the contract ?
'ights under the contract.
■t : Vou objected to tho inquiry as to t
c question. was modified so as to exelnd
t did you mean when they said any rig!
int there was no other individual that
arrangement with in regard to this coni
lifer to sell to tho Western Union Compi
dance of it
is what called my attention to tho matt
is matter of record.
did not except the Western Union C
isked if any corporation was interested ;
to except tho Western Union Company i
an we made an oiler to soli to tho
apany on tho 30th of Deccmbor, and l
pled tho oiler : and I told tho Westei
Q. Witli whom is that arrnngoinont to sond 7 1138
A. I dcclaro I don’t kuow; it comes from tho Pntout
Ollico direct to ino; some of my assistants arrange it; it is
n standing order from some sotirco.
Q. So nil coino to yon ; I take it ns you, interested as an
electrician, examined them ns they come in, more or less 7
A. Well, as much as my time will allow '; life is not long
enough to read everything.
q. Yon were in habit of reading tho Telegrapher from
time to time ; it wns the opposition paper 7
A. It was the opposition paper; yes, sir.
Q. It is suggested that I did not get tho date when you 1139
put the ipiadruplox iuto tho wires of tho Western Union
Company for use ; that was iu tho fall of 1874?
A. We put it in operation between Now York and Boston
on the 30th of September, 1874, and between Now York
and Chicago in December, 1874.
Bo direct examination by Mr. Dickerson.
Q. I wish to ask you whether any persons, corporation or
or individuals, had any interest iu yonr rights iu tho con¬
tract with Mr. Edison t _ 1440
A. No, sir; that is my own property— my own afTair.
Q. It lind been said that you held it for the bonoflt of tho
Western Union Company?
A. No, sir; I hold it for tho benefit of myself, if X over
gut any benefit out of it
Adjourned until Monday morning.
Heaiuuo Besomed.
May 28, 1877. mi
George B. Prescott recalled. Examined.
By Mr. Lowrey :
Q. There has been somo testimony offered concerning an
interview between yourself and Mr. Edison at tho tune
prior to tho proposition made by Mr. Edison to you, when
854
1442 Edison, it is snid, lind complained that ho had not all the
facility which ho ought to have. Did you have such an
intorviow ?
A. I did.
Q. When, about, did the interview take place?
A. The latter part of February, I should say, 1874.
Q. State what took place at that interview?
A. Mr. Orton sent for me to como to his room. On ar¬
riving there I found Mr. Edison seated on the sofa near Mr.
Orton, and Mr. Orton said to mo substantially that lie and
1448 Mr. Edison had made an agreement the previous year to
make improvements in Stearns’ duplex and to make other
inventions and improvements in duplex which would belong
to the Western Union Telegraph G'ompnny, tho prieo to he
settled by mutual agreement or by arbitration in tho event
of disagreement. Mr. Orton snid that Mr. Edison had not
made ns much progress ns he had expected, or that ho was
disappointed nt tho progress ho had made, and he desired
that 1 should give Mr. Edison all tho facilities that ho re¬
quired in tho development of his ideas and inventions in
regard to the duplex, and to give him access to my experi¬
mental room.
Q. What did Mr. Edison say, if anything?
1444 A. I don’t remember any remarks that Sir. Edison made
hir. Edison left with mo and accompanied mo to my experi¬
mental room, and 1 gnvo him possession and also gave him
a duplicate key to the room, so that ho could como out and
go in when ho saw fit.
Q. Did 1m proceed to do any work in that room?
A. Ho did. He got his apparatus there and continued
there for some weeks. I ought to say, in justice to myself,
that I was absent myself for several weeks, and I do not
know during that timo whether he was nt work or not. 1 !
1445 wonl t0 Key West
Q. When did you go to Key West?
A. About tho middle of April, and returned early in
May’.
Q. Was there ever any conversation between Mr. Edison
and yourself when you came to make this agreement in ro-
spent to tho relation botweon Mr. Edison and tho Western 1446
Union Telegraph Company ?
A. I do not recollect any specific conversation about it ;
thoro was an understanding that wo woro making it for the
company.
By Mr. Lalrobe :
Q. What was said?
A. I don't remember specifically.
Q. And after that timo, if I understand you correctly,
you told Mr. Edison something iu tho way of giving au-
thority to act for you ; pleaso ropeat that?
A. I told Mr. Edison -
Mr. Wheeler : Wo object to that. It is clearly not proper
on ro-oxamination ; it is reopening tho wholo subject, and it
is going over ground that has already been covored.
(Admitted.)
Q. I think you said thnt you gave Mr. Edison some lib- 1448
orty in respect to making oflors without consulting him ;
pleaso ropeat what you said about that?
A I told Mr. Edison thnt in future negotiations with Mr.
Orton, in regard to tho prieo of quadruples, any price that
was satisfactory to him would bo satisfactory to mo ; in
other words, I assented to anything thnt Mr. Edison would
“"‘ms that before or after this paper of December
A. It was attor tho paper of December 16th. 1449
Q. Wlmro wore you after that timo to the 1st of Janu-
“r a! I was in New York, I think, until the 24th of Decem¬
ber, and then I wont to Massachusetts and spent the
Christmas and Now Yoar's holidays.
Mr Tow ej nq e of Mr. Wheeler if ^ designs to
argue to tho Court that the title to tho present plaintiff
1450 any way made better or ia in any manner fortified by rc„-
son of it being passed through Mr. Samuel M. Mills, Iltlj
states Hint Mr. Mills has evaded service for the past fin f
days, that lie is a reluctant witness, and that he docs not
wish to tnko any further trouble to produce him unless it
shall be necessary.
Mr. Wheeler states that ho will confer with his associate I
and will reply after recess. '
1451 (The cross-examination of Mr. Hennen is waived by do- f
fendnnt’s counsel.) *
Mosca J. Farmer , called for defendant and sworn o
ntnincd. ’
% Mr, Dickerson :
Q. What is your profession and position ?
tt E'ootno'l'°nginccr, and at present olootrieian at the
United States Naval torpedo station, Nowport, It. I.
1452 A. S°yCd ^ th° TJnit°d S‘at0S Goveri,mcnt?
Q. Aro you in the employ of or oonnooted with the
W tern Union Telegraph Company in any way other than
to be a witness here?
A. No other way.
Af- ?” •tI“\t'.V0 General classes under whichtclc-
graphs are olass'fied in respect to their modo of operation
A. Electro-magnetic recording and oloetro-ohemioal.
a °nro l"'° d,stin°t classes?
A, Two distinct classes.
1468 elcAILA10'1,1''0 C0Urt is «»t instance of the
eleetro-ehomieal telegraph as it appears in the history of
ntatb?iPrdCr!?1810.Or’12-and Schilling in 1810,
ohemical tele ° i”3,1 ‘8 Carl'er dlaoo'rorors of the electro-
chemiea aedf aP W '°m ^ ™re observed from
A. Yes, sir.
Q. And were transmitted how ? 1454
A. By opening and closing an electric current, sending
the current from the galvanic battery, and wero transmitted
manually ; as I say, they wero obsorved as oai-ly as thoso
years, and the earlier ones were observed by tho operation
of certain phenomena.
Q. Bubbles of water?
A. Yes.
Q. With decomposition of salt?
A. Yes, sir.
Q. Whnt is tho first electro-magnetic telephone — what is 1455
now called “ telegraph ?"
A. I should say that Prof. Honry’s discovory was tho
first oleotro-magnotio telegraph.
Q. In whnt year?
A. In 1831, in wkioli ho struck a bell by the uso of an
clcctro-mngnct and a polarized magnet.
Q. Whnt is called a polnrizod rolny?
A. An equivalent to it.
Q. Then go a stop further ; whnt is the first clectro-mag-
notio telegraph that you know of, as distinguished from a
tclophono ? 1458
A. That of Prof. Morse, beginning in 1831 and experi¬
mented with in 1830, ’38 and ’40.
Q. Stnto to the Court tho character and origin of whnt is
called the Morse?
A. In Morse’s first telegraph a ponoil was moved across
a strip of paper by an elcotro-magnot, and tho signals wero
transmitted automatically by means of whnt might be
called types with characters imprinted on them permanently.
They wore set up by a port rule, and these passed in sue- 1457
cession under n contnct mnkor and breaker; tho signals
were received by a pencil moving across a piece of paper,
making a wavy lino or succession of V's, and a group of
V’s formed a specific character— Iottors for instance. •
Q. Now tnko tho next stop?
A. The noxt stop appears to have boon to apply an elec¬
tro-magnetic armature to ono end of a lever, and a stylus
or embossing pan to tho other end of a lover, which made
858
869
1458 indentations in a slip of paper which wore continuous or
interrupted ns tho circuit was closod or opened ; .the length
of these indentations could bo controlled by tho oporator;
tlic grouping of long and short indentations were made
into characters to signify letters.
Q. And that was automatic and electro-magnetic tele¬
graphy ?
A. Yes, sir.
Q. Wlmt is tho next step ?
A. Tho next step appears to have boon to lay aside the
1450 automatic transmitter and to substitute therefor manual
transmission by means of a spring or key by which tho cir¬
cuit was made and brolcon by depressing tho end of tho
lover or spring, by tho hand. It was manual in contra¬
distinction from automatic. The rccoption continued to ho
olcctro-mngnetio. The mechanical method of ombossing the
l'-apor continued tho same. It was still oleetro-magnotio
tolcgraphy.
Q. Which is tho next stop ?
A. Tho noxt step was that tho paper was dispensed with
1480 “'id tl‘# signals wore recognised by tho oar and it beeaino
aural tolography or tho tolophouo, which was au oleetro-
magnotio telephone, if you ploase.
Q. 1710011 is the thing -
A. Which is tho thing used to-day and, from all I can see,
will last to tho ond of time.
Q. When did you over have a personal acquaintance with
tho practical operation of telegraphy ?
A. In 1847.
Q. In wlmt employment or under wlmt circumstances?
A. I was connected with Francis 0. J. Smith as line re-
1481 P:urm' nmi 1 an offico at South Frnmington in De¬
cern her. 1R47 b
Q. What instruments and
them?
wlmt method wore used in
A. A Morse manual oleetro-magnotio recorder.
A I did°U °V°r IlaV° 10 d° WitU th° chemioal system?
Q. When and whore ?
A. Commencing in the latter part of tho year 1849, I
t.
opened several offices on tho Vermont and Boston Chemical
Telegraph lino and was superintendent of tho line from
May, 1850, to May, 1871.
Q. Go back, if you please, to the chemical system. Wlmt
is the Bain system ?
A. The Bain| systom, as I understood it at that time, was
olcctro-chomienl in its rccoption. Messages were received on
electro-chemical paper by a stylus and were transmitted
either manually by use of a key as on tho Morse telephone
or automatically by perforated paper.
Q. Prof. Bain was an Englishman ?
A. Yes.
Q. About what year was tlmt V
A. I should say about 1848 ; I became acquainted with
it in practice in 1849 or 1860.
Q. From that timo, then, you woro using tho Baiuo sys¬
tem of manual transmission?
A. Yes, sir.
Q. And chemical reception ?
A. Yes, sir.
Q. Ou running strips of pnpor ?
A. On n circular disk of paper, which revolved, and tho
writing was traced in a spiral.
Q. Do you know when tho Bain systom of automatic
came to bo used in this country ?
A. My earliest recollection of it is about the yoar 1850 ;
I then saw an experiment at Boston, between Boston and
Now York, and Boston and other placos East, and lam not
certain but that I also saw them between Boston and Kali,
fax, but I do not remombor that distinctly.
Q. Wlmt nnmo wits given to that systom among eleotri-
A. It was then called the Bain fast system, or tho Bain
automatic system, or the chemical fast system, or tho Bain
automatic
Q. What did you understand to bo that system which
was called tho automatio systom in 1869, 1870 and 1871?
A. I understood it to bo the system which automatically
transmitted messages by perforated paper, and wliioli auto¬
matically received them on chemical paper.
1466 Q. Tlmt is the Bnino system ?
A. Tlmt is the Bnino system, or cliomicnl system, or au¬
tomatic system, ns I understood it.
Q. Have you mndo inventions in telegraphy yourself?
• A. Yes, sir j several.
Q. Are they patented?
A. Some of them.
Q. Tell us what is the origin and what steps have beta
taken in developing the double transmission system?
A. The earliest efforts wero mndo by Dr. Guinlel about
1407 1853 or 1855 ill double transmission. Perhaps it may 1b
well to classify double transmission thus: Contrnphx trans¬
mission, or transmission of messages in opposito directions;
dipicx transmission, transmitting two messages in the sants
direction, both coming under tho moro generic term of du¬
plex transmission. Diplox and double sending meaning
the same, and duplex being a more goaorio term than either
contrnplex or diplox and other terms, such as couutcrplox
nnd multiplex.
1468 ty 1,10 Court :
Q. "What is tho moaning of tho torm “ diplox?"
A. Tho torm di in chemistry has a signification peculiar
to itself. It has a larger number of base elements tlmu of
tlm acid. Bor instance, di-ehlorides have n larger portiou
of base than bi-chlorides. Bi-olilorido means two atoms of
c llormo to one of bnso, and di-chlorides means two atoms of
baso to ono of chlorine.
Q. lliat is tho origin of the torm diplox?
A- The term diplox was coined to express double
sending, either m opposito directions or in tho same dirco-
ion. t was well to have n term which would distinguish
ouble sending in contradistinction to single sending, and
diplox was coined for that purpose.
Q- What progress has been made and what steps taken
m developing diplox and contrnplex to the proportion of
Jcgin to0be“e(f!0tl qUadrUp,eX; W,len did word first 1470
A. The word simplex was used to signify single sending.
II e Morse instrument and the Bninc manual might be
called simplex telegraph. Sending signals on an electro¬
magnetic circuit might bo called simplex. When a circuit
is broken— when the lino is down for i„stnnce-no signals
can bo sent at all. In order that two persons shall send
-signals independently and simultaneously, it is necessary
for the circuit to bo continuously wliolo. Tho continuity of
l n;0,i?',T’ltmif11bQmni'ltained- Itisono of essentials 14T1
| o duplex, and the same is true of simplex. The continuity
of tho circuit is absolutely necessary, in order tlmt two nor-
sons may simultaneously send independent signals. Dr.
“unite! did not provide for the continuity of tho cirouit It
was somewhat later that tho preservation of tho continuity
of the circuit was provided for.
Q. By whom?
A. By Kramer, by Bernstein, by myself, nnd various
others ; all about in the lattor part of tho year 1855, and
the beginning of 1850. This essential was provided for lm
about tho latter- pnrt of 1855 ?
Q. Have you a patent in reference to this ?
A- I have ono or two. There are two modes of nccom-
pushing this: ono by Kramer, in which tho battery was
shunted out, and into a cirouit without interrupting the con¬
tinuity ; the othor mode is that in which two terminal
i anches nro applied to tho main circuit without interrupt¬
ing the continuity, thus (illustrating with fingers). Tho
hue was in contact with ono of tlieso terminal branches,
bon tact was thou made through tho terminnl branch, before 1.173
breaking with tho fust terminal branch, and thus continuity
vns unbroken. It is a fact, that in simplex telegraphy, in
the original Morse telegraph, all tho receiving instruments
responded to tho signals mndo by any ono operator ; his
own receiving instruments ns well ns others. Now, in order
that lie might bo able to receive some one elso’s signal on
his own receiving instruments, ho must provido soino means
to provont his own instrument responding to his own signals.
362
1474 Guintol provided for Hint, and others have provided for it.
in various ways — Frischcn, Siemen and Hnlskc, and others.
Q. Away back in 1853 and 1855?
A, Yes, sir; Dr. Guintol was tbc first I remember : now
the earlier duplexes made signals by increasing and decreas¬
ing the current, increasing it from zero to something and
decreasing it from something to zero ; that was the sole
method adopted in the earlier duplexes of sending signals
by increase and decrease of the curront ; in my patent in
1858 one operator operates by reversing the direction of the
1475 current, no matter what the other ono does — no matter how
tho signal is received; ho simply reverses the direction of
tho current without either increasing or decreasing.
Q. That was your contrnplox of 1858 7
A. Yes.
Q. Is it patented?
A. Yes, sir ; it was dono by u continuity preserving key ;
tho continuity, ns I said, must bo preserved in some wny.
and this key wns made to prosorvo tho continuity while re¬
versing tho direction of the current.
147Q Q. It had two functions ?
A. Yes.
Q. To proservo tho continuity, and to revorso tho cur¬
rent?
A. Yes; in this combination tho operator at the other
station also reverses tho the direction of tho current from
his battery. On tho diplox of Stark k Kramer and Bosschn
nnd others there were two independent operators operating
independently of each other, ono operator sending tho cur¬
rent of a particular strength, nnd tho other operator sending
tho current by a larger strength, porlmps in the same diice-
1477 tion or in opposito directions. In Bosschn’s method, when
tho operator sent a positive current, tho other operator sent
a negative current of greater strength, both being transmit¬
ted simultaneously, nnd tho resulting current wns the differ¬
ence between the two.
Bj- Stalk’s method, he sent two currents of different
strength, both in the sumo direction, and the resulting cur-
rent wns tho sum of both. Now, I linvc spoken of these t wo
different methods of increasing and decreasing the current,
363
nnd of reversal of tho current. We next come down to Case 1478
II. Thera Edison has combined the two functions, ono
operator reverses the direction of tho current, ns in my pa¬
tent of 1858, nnd the other operator increases and dcercascs
tho current independently of what tho first operator is do¬
ing. There tho two functions are combined, tho two oper¬
ators perform these two distinct functions independently of
each other, leaving the result to consequences. The current
is increased from something to something grantor, and dim¬
inished from something grantor to something.
Q. This is tho first time in which that has ovor boon 1479
dono?
A. Yes, sir ; tlmt is tho first time in which that has ovor
been accomplished to my knowledge ; in that invention no
now dovico wns used ; it wns a combination of old dovioos
that were woll known.
Q. In this Cnso H?
A. Yes, sir.
Q. Patent No. 162,633 ?
A. Yes.
Q. There is ono other cssontinl factor in working tho 1480
line, nnd that is, tho length?
A. An incronso of tho length of tho lino manifests tho
oharaotor of tho Leyden jar, that is oapable of storing elec¬
tricity ; the wire becomes tho inner coating, nnd tho earth,
twenty foot distant, is tho outer coating, and tho air betwcou
is tho gln'ss ; this Loydon jar capacity bocomcs very mani¬
fest when a lino is a thousand milcB long.
Q. What is tho effect of tho ordinary Morse relay?
A. I would, porlmps, oxplnin that in this wny: when a
battery is put into communication with tho wire, supposing 543 1
one pole of tho battery to be connected with the earth and
another pole to tho koy, tho koy to tho relay, and the relny
to tho line; when tho koy is pressed down tho armature of
the relay makes a sudden start which makes a noise, which
is more perceptible on a long lmo than on a short lino ;
this is owing to tho sudden inrush of tho static capaoity of
tho lino; this sudden rush causes tho armature to make a
sudden and heavy stroko ; tho longor tho lino tho heavier
A. I think it is translated in Mr. Prescott’s hook.
1486
very rapidly; it docs not Inst more tha”' i»rt of“a
second, or some almost inappreciable length of time.
Now, in working the differential duplex, in which the
olcctro-mngnot is applied, one part going through one coil
of the relay to the line, and the other part going throuch
the other coil to the rheostat which has no static capacity
llns coil or branch of the circuit docs not take any static
charge; but, if this artificial lino or branch circuit had static
capacity, then the part of the current which went through
1483 one coil to lino with a sudden jump, mid the other part
winch wont through the other coil in tlio opposite direction
to tho artificial lino having static capacity, the two rushes,
being in opposito directions, would neutralize each other,
and there would be no kick of the armature. Stearns pro-
v t ied against tins difficulty by applying „ condenser to the
artificial or rheostat circuit, and thus bestowing on it the
static capacity which tho lino possessed, and the static oar
pacityoftlie nrtifioin1 line would neutralize the static eliargo
n o the real line. Another mctl.od-which I invented my-
1484 17 Ttrn !z,ne 11)0 static charge was by the insertion
n o the mam line of a secondary wire of the lluhmko.il
cod, and, by breaking the primary, cause an induction of
»;,b“ t°“i
aritnl01'0, !),utt,s.omo meol)anicnl methods to restrain tho
arinatmo while this static charge expends itself.
plex tSexed?8 ltal *UndruP,o:£ doscribcd-that is, di-
1485 mnt, 1,1 ‘!10 fustri™ Journal of the Telegraph; I do not re
Sb:r„ at°' ^ 8I'0UW t,d"k "as in the year
' ,!r, “jr.0f ' 9'iadmplex was set forth, and
Kramer 1 1 T ed l,mt 11 mlgbt be dono- 'l'1'0 diplex of
St ' ? Irf bBW°*cd with a differential relay as in
b eu i, ?' °r ,Siemon nnd Halekc, and thus diplex
bo qnadruplexed, or double diplexed.
German? PreSOOtt,s book contains tho translation from tho
(Mr. Dickerson offers in ovidonco the translation from tho
German on pago 888 of Mr. Prescott’s book.)
Q. Is that the description that you refer to?
A. Yes, that is tho translation of tho description.
Q. That is a correct description of the method in use for
making quadruplox out of duplox?
A. Yes, sir, for making quadruplox out of duplox.
Q. l’ho differential method ?
A. Yes. 1487
Q. Look at page 852 of tho book.
A. I have it, sir.
Q. I wish to oall your attention to the fact whether that
was tho differential or tho bridgo systom, supposing that to
ho tho systom in use. Is that tho system referred to in tho
first that we gave you, or is it tho bridgo systom ?
A. It npponrs to bo tho differential.
Q. That is on pago 852 of Mr. Prescott’s book?
A. Yes.
Q. Plonsc compare that with tho description that is re¬
ferred to on pago 888. 1488
A. By this apparatus on page 852, by tho uso of tho two
coils of the relay, the relays are prevented from responding
to the signals which arc sent from tho station nnd are left at
liberty to respond to signals received from tho distant sta¬
tion ; it is at liberty to receive from tho distant station simi¬
larly, as in tho description on pago 888, whilo the signals are
transmitted in n different manner.
Q. Tell us what that drawing on page 852 is; is it a du.
plex or a quadruplox?
A. It is diplex and quadruplex ; diplex double, diplox 1489
capnblo of receiving ns well ns transmitting.
Q. The question I wish to ask you is, whethor that is the
thing described in tho German book?
A. This apparatus answers to that description.
Q. Have you knowledge of tho present motliod of work¬
ing quadruplex in tho 170810™ Union — do you know
whether it is worked that way or by tho bridgo systom ?
867
1490 A. I think I have scon it worked both ways. I lmvo gg(|
very much practical acquaintnince with tlio
used in the Western Union company’s office.
Q. Aroyou familiar with tlio method described nndei-j
ldbited by the drawing in what is oallou
A. Yes.
Q. book at the text of Cnso 99 and tbo diagram of Ck|
99. 1
A. I have it, sir.
Q. You lmvo read that?
1491 A- Yra-
Q. Aro you familiar with it?
A. Tolerably.
Q. In which class of tolcgraph does that invention be
long?
A. Merely in tlio class of the oloctro-mngnotio telegraph
Q. Is that invention there described and speoilied appli¬
cable to the automatic system of telegraphy ?
(Objected to on the ground that it is asking the witmsl
1492 to pass upon an issue in this oaso. Objection overruled]
Exception.) 1
A. As I lmvo dofined automatic telegraphy, the trans¬
mission is automatic; the roooption electro-chemical, nol
electro-magnetic. With that definition and that understand¬
ing, I cannot say truthfully that this was applicable to sue)
automatic telegraphy.
Q. Wlmt would be thoofleot of adding to this thing de¬
scribed in case 09— tho perforated transmitter at one end of
1493 1!’ i t lCC,10m*ca^ recc>ving paper at tho other end, beyond
the electro-magnetic rccoiver upon both chemical and elec*
tro-magnctic operation ?
. A> W° wil1 look B«*t at the receiving end. Suppos¬
ing wo lmvo one or the other of tbeso relays upon a local
cnouit a Inch shall bo marked on cliom ical paper. Then
such a contrivance can evidently be added to what is shon e
Lined by the speed at which the electro-mag- 1494
hmt could respond. All my experience goes to
Jjhow that electro-magnetic reception, with present known
.(■results, is slower than clectro-ebemical reception ; it is a
>11 known rule in electrical seionce that the continued pro¬
duce of the total resistance of the line— its total static capa-
nud number of words per minute is a tolerably con-
t quantity ; with the Morse instrument the constant
inity would be different from the chemical instrument;
irdi’ng to my experience the chemical receiving appa-
s is capable of receiving nearly four times as fast as the 1405
Vorse relay that I have experimented with; the effect
1 of using either of these electro-magnets to record
...nieally on paper would be evidently to slow the rate of
reception'; T have always understood the beauty of the
automatic telegraph to be its great speed of reception ; that
was the cry made in 1868, ’69, '70 and 71, the tremendous
I speed at which messages could be received — 1,000 words
I a minute; my own experience would not lead me to believe
that on an ordinary Morse apparatus more than 70 to 100
words, or possibly 120 words per minute could be received ; 1495
doubt but that apparatus could be constructed that
would receive even more rapidly than that, but such as I
experimented with I should hardly expect would go
igh as 120 words per minute with a Morse receiving
relay to record chemically; I am credibly informed that
1,000 words a minute have been received automatic ori cir-
ruits (I do not know exactly what length) in the neighbor¬
hood of 200 miles.
Q. Have you made calculation upon data that have been
exhibited to' you, or that huve been accessible to you, of 4497
the relative capacityof the electro-magnetic instruments and
the chemical receiving instruments, so as to be. able to state
wlmt proportion of the speed of the chemical reoeiver can
be attained by the electro-magnetic receive r ?
A. 1 made experiments, a few weeks since, on a Morse
receiver from Chicago to New York, and from Omaha to
. . . . New York, from which I deduce conclusions which would
-perhaps I might say apply to case 99. If it wcrell leaJ me t0 j„fer that 40 words per minute could be received
applied the speed of reception would bo doter-l on tjje yorBe instrument over a line 1,000 miles long, with
1498 a rcsislanco of 10 ohms, and say a No. 6 iron wire; if I
take data that Mr. Johnson and others have given me, I
should be led to supposo that four times as much as that,
or 160 words per minute would be received over a similar
line on chemical paper, on a line 1,000 miles long, offering
resistance of 10 ohms, and erected, as is usual, about twenty
foot from the ground.
Q. What advantage, if any, lias the chemical system over
die electro-magnetic ?
A. Its greater speed of reception.
1499 Q. Is there nny other that you know of?
A. I don't think of nny other.
't ? ^ ^ kils I10^ £ot fhat, it has nono ns you understand
A. I should think it had nono.
Cross-examined by Mr. Hodges.
Q. Did I understand you to say that in the Kramer
method, either of the messngo could bo sent by tho reversal
1600 of tho current.
-A- No, sir; I did not say that intentionally.
Q. Then it would not bo true would it, to say in that system
you could send two distinct messages, one by the reversal
the currents?' nn<1 ^ °th°r inorc#8in«5 nlld decreasing
A. Not always invariably.
ADo y.ou bl0"’ of nny other system or of nny other in-
vontionpnor to ease 99, say in 1878, by which that was
1601 A. I do not
Q- That was dono in ease 99 ?
-A- Yes, sir ; in ease H.
Q- It was dono in ease 99, wasn’t it?
A. Yes, enso H was before it
ogQ. You understand that ease H was invented before ease
-A. That was lay understanding.
Q- Have you any knowledge upon the subject?
A. I have no knowledge further than tho evidence I bavo 1602
heard and wlmt I have rend.
Q. All you know is what you got from tho evidence?
A. Yes, what I got from tho evidence, and what I have
Q. Tho means by which that was carried out is the
a „ci ci t of tho batteries so that there are two sending
instruments and two receiving instruments, nro thcro not?
A. There nro.
Q. Tho receiving instrument being placed at tho distant
stations, while tho sending instruments aro at the same sta- 1503
tion, ns shown in case 99 ?
A. In ease 99.
Q. In enso II, ono receiving instrument is placed at one
station and ono sending instrument at that snmo station?
A. Yes.
Q. Aro there nny means shown in case II for sending two
messages in tho snmo direction practically?
A. For nil that appears to tho contrary, tho key Kl in
enso If could bo placed anywhere on tho oireuitat the snmo
station wliero key IC is. 1604
Q. Do you sco anything in the invention shown in case
H by which it could bo prncticnlly worked ns diplex in dis¬
tinction from contrnplox?
A. I do not.
Q. So far ns you know, tho first invention of this kind,
tho arrnngomcnt of the apparatus by which two messages
could bo sent in the same direction, ono alwnys by reversnl
nnd tho otbor always by increase and decrease, was ccbo
99?
A. Yea 1606
Q. Under tho lend of Mr. Dickorson, you classified tele¬
graphy into two classes automatic and eleotro-magnetio.
■Wouldn’t an equally nocurnte division be to divide all tele¬
graphy into simplex and multiplex?
A. I classified telogrnphy into eleotro-magnetio and elec,
tro-chomieal.
Q. I aslc you if this other classification could not be
made ?
370
371
A. It could bo mndo; yes, sir; simplex and multiples.
Q. Either classification would include both automatic and
eleetro-mngnetic, wouldn't it?
A. Certainly.
| Q. If you had an invention that was described in these
Iwords : “ The arrangement of the batteries arc, two receiving
I instruments at one station and two sending instruments it
I the other, one of the receiving and ono of the sending inslru-
menls always working by reversal, and thu other receiving
nud sending instruments always working by inercaso mill tie
crease." In which of the classes you have named would
snch invention bo included, in the automatic system or in
electro-magnetic ?
A. Do I understand you to moan with tho transmitting
keys at the station where the batteries are not?
Q. Ho, sir; with tho transmitting keys at tho station
where tho batteries aro.
bo mndo to work in that general way and como under the
elcolre-chomical or under the eleetro-mngnotie.
1608 r^'mt 's to say, the invention which I have described
might bo either the oleotro-inagnotio or a oliemical one?
A. Yes, sir.
Q. Wouldn’t that bo a correct description of case 00 ?
A. I should sny it would bo if it was a satisfactorily
• working instrument.
' Q. How would you classify an invention of this kind:
11 Transmitting two distinct messages over ono wire, in the
same direction, at tho snmo time, one operating by a revorsal
of the battery current and the other by increasing or do-
1609 casing the current from tho battery?"
A. It is classified under either class.
Q. It is an invention applicable to both classes ; isn't it?
\ A. Providing tho elcotro-chcmical receiver can be made
Jo work properly.
I Q. Provided you can do it?
' A. Yes.
Q. You have read Schilling’s book ; lmvn’tyou?
A. 1 curs since, but not recently.
Q- Do you remember what the title is 7
A. I do not. 1S10
Q. Isn’t tho title of it, “ Electro-mngnotic Telegraph?"
A. I don’t remember ; it lias been years since I lrnvo seen
Q. Did you over see tho D’Arlincourt relay ?
A. I liavo looked at it this morning; the description was
not sufiiciont for mo to understand it very well, further than
that I thought it was a polarised relay.
Q. Do you know what it is cnpablo of doing?
A. I do not
Q. Do you remembor what Mr. DTnfrevillo testified to on 1611
the witness stand ?
A. I don’t remembor what ho said.
Q. You heard him on tho witness stand ?
A. Yes.
Q. You rogard Mr. DTnfrevillo ns a competent olectri-
oian ; do you not ?
A. Yos, sir.
Q. If ho should say that ho lmd dono a thing you would
boliovo him, would you not ?
A. I am not sufficiently well acquainted with him to say 1512
that.
Q. If Mr. DTnfrevillo had said to you that ho had -
The Court; I think it is an imputation upon tho witness
to pursue that inquiry any further. Ho has not been im-
poachcd by anybody, so far ns I recollect.
Q. If Mr. DTnfrovillo should say to you that ho had soon
tho D’Arlincourt relay working upon 260 miles of lino at
tho rate of 600 words per minuto, would you boliovo that ? 16lg
A. I should like to see it.
Q. Have you any reason to bolievo it cannot bo done ?
A. I liavo no reason to know that it can of my own
knowlodgo.
Q. Havo you any reason to supposo that it cannot bo
dono ?
A. My own experience would lead mo to doubt it.
Q. With what ?
A. With polarized rolays or with Morse relays.
14 Q. Polarized relays generally work faster than Morse re¬
lays?
A. I should say generally ; I was reading Du Moncel
this morning that over a line of 1,200 kilometres lie got
seventy letters per minute, which would bo about fourteen
words; that would bo a line COO or 700 miles in length,
and fourtocn words I should not consider a very great re-
Q. In Exhibit V you stated that the limit to which the
chemical receivers could bo worked would bo the limit of
15 the speed of the electro-magnet or relay ?
A. I said whoro the electro-magnet was usod to close one
chemical receiver.
Q. But if the electro-magnetic rccoivcr wore placed here
(referring to the diagram on tho blackboard) that would not
bo so, would it — from X1 to tho letter L ?
A. No, sir.
Q. It would bo true if tho ehomionl receiver wore placed
hero in tho shunt circuit botween X‘ and Xs ?
A. Its speed would bo somewhat afleotcd, but it would
•6 not bo limited to tho speod of tho eleetro-magnot.
Q. IVhat is tho amouut or work whieli the olcotro-inn<'not
ni has to do?
A. To start from rest to motion and to come to l est again
moving tho nrmnturo and its lovor?
Q. Tho nrmnturo itself has to move ?
A. Yes, sir.
Q. Thnt is what it has to do?
A. Yes, sir.
Q. How largo should that armature bo made ?
A. I he smaller tho armature tho greater tho rapidity at-
tamed; 1 don t know how small it might bo made.
A Ye^ “™atUr° 'V0UM opon and closo 11 circuit?
small fDd th°r0 'S D0 reaS°n Why !t sbouW I10t bo m“do
A. Tho smaller it can bo made to perform its work the
greater rapidity will bo attained.
A. No^iT InTverlw ‘on D’ArIincourt rcIlld' ?
Q, You stated thnt you had made experiments with 1618
Morso instruments. I suppose those woro tho Morso instru¬
ments that wore used boforo Stoarn’s invention came into
use?
A. They woro rolays that were iu uso at tho timo tho ex¬
periments I refer to were made.
Q. At that timo there was no systom by which you could
send messages at tho rnto of more than 120 words per min¬
ute, chemical or automatic, was thore ?
A. I havo soen 400 words por minuto sent in 1850, 1
think, chemically. 1510
Q, How far?
A. From Boston to New York, say, and perhaps further
to tho best of my rooollootion.
Q. Thore was difficulty in keeping that up, wasn’t thore?
A. Not that I am aware of.
Q. Did that systom oomo into any practical uso at that
time?
A. No.
Q- Why ? ,
A. I oould not tell you. It was not bocause tho lino was 1620
not capable of roooiving and rondoring tho transmission.
Q. You don’t know ?
A. I could not tell you.
Q. If you bad an oleotro-magnot wkiok would vibrato
sufficiently fast to give you 120 words per minuto, wouldn’t
that do all tho work thnt was required of any electro-mag¬
net up to 1870 ?
A. So far as I am aware.
Q. Of Mr. Wheatstone's eleetro-magnot it is stated that
tho oxtromo rapidity with which that oould bo worked was 1g2X
something like 120 words por minuto. That is practically
all thnt can be sent, isn't it?
A. I should think it was. _ ,
Q. So that elootro-mngnet will do all that is required of
it, won’t it?
A. I oould not answer thnt.
Q. You told us that you had had sent something liko 40
words on tho Morso instrument.
A. I said that I had seen messages sent at such a rato
874
1522 tlmt from tho law of tho invorso square of the distanco I
should deduce that messages could bo sent at the rate of 40
words ovor a lino 1,000 miles in length which offered a ro-
sistnnee of ion ohms per mile.
Q. On what instrument?
A. Au ordinary Morso relay not oxceoding two inches
in longtli.
Q. You stntod that you calculated, from that, that you
could send 120 words automatic ovor 1,000 miles of wire?
A. I didn’t say that I calculated from that, but from Jala
1528 which Mr. Johnson and Mr. Little and others gave moj
and, from my own experience on tho automatic lino, 1 in¬
ferred that tho speed of tho chemical transmission would bo
four times the speed of tho Morso.
Q. That would be 100 words ?
A. Yes.
Q. Do you know any lino where thoy sond 100 words
per minuto ohomionl 1,000 miles long ?
A. I don’t know whore they are sonding nny, except I
havo scon it in tho A. and P. dlUoe.
1024 Q. Olio thousand miles?
A. No, sirj I have novor soon thorn sond ovor 1,000
milos; I havo no doubt that ICO words por minuto could
bo sent ovor a No. 5 wiro 1,000 milos long.
Q. Practically, ns a matter of business ?
A. I don’t know how it would bo as a mnttor of business,
prnctionlly. ’
, ,.°.u rcr[!rro(3 10 tho Edison maguot, which is usod for
neutralizing tho static discharge.
' £ I d0“’t think I referred to tho Edison magnet.
1525 Q- You referred to a magnet.
A. I referred to an induction coil.
Q. With a magnet in it?
A. With a core.
AT iSiiSr “ “* “ “
A. Ididn'trcfer to it ns being placed in a shunt circuit.
Q. You said with an induotion coil ?
A. Placed in a primary circuit.
Q- It had been used for the purpose of neutralizing tho
static discharge, ns well ns what is called tho “Stearns Con- 1526
denser?"
A. Usod in a branch circuit.
Q. And tlioso aro the only two methods?
A. Except soino moolianical mothods which I have soon,
and which I havo also dovised mysolf.
Q. Look at tho drawing, ease 112, and tell me if the mag¬
net which is marked U docs not porform that same function ?
A. This would nppcnr to be, from their cursory exami¬
nation, placed tlicro to neutralize tho efl'cct of tho static
charge. 1527
Q. It is intended to remedy tho same difficulty which the
Stearns condenser was intended to remedy ?
A. Yes, sir.
Q. You aro familiar with system l
A. Automatic?
Q. Yes.
A. Not very.
Q. You know what it is?
A. I know about what it is.
Q. That is an automatic^ system | isn’t it? 1528
A. Yes.
Q. Eleotro-mngnetio ?
A. Yes.
Q. It could not bo classified therefore in oitlior ono of
tho two classes which you lmvo given ?
A. I should classify it as elcetro-magnetic.
Q, It is automatic too, isn’t it?
A. It is automatic ; yes.
Q. Thon it could not be classed in oithor or tho two classes
you havo named to tho oxolusionof the other; could it? 1529
A. Perhaps wo don't oxnctl.y understand each othor. My
classification was electro-magnetic and electro-chemical.
Q. If you had enso 09 set up as n quadruplex from hero
to Philadelphia, would you need any condensor at all?
A. Prom my experience, I should think not.
Q. Would you need anything in order to mnko enso 99a
quadruplex, working practically between hero and Philadel¬
phia, oxccpt that which was old and well known prior to
1870, oxcopt of course, what is shown in the case itself ?
1580 A. I should think it would bo made to work in
measure.
Q. Practically and beneficially ?
A. Practically and beneficially.
Q. In order to work 99 over long circuits as a diples
you would have to have a condensex or something as a sub
stitutc for it ?
A. As a diplcx simplv?
Q. Yes.
A. I should think not
1681 Q. Over long circuits you have to have a continuous wire.
In working diplcx, would not tho same trouble be oncount-
orctl — the effect of the static discharge ?
A. Tho static discharge gives tho trouble at tho transmit¬
ting end.
Q. Is tlioro not the same trouble from reversing tho cur¬
rents in tho neutral relay?
A. Yes, sir ; there is trouble from tho reversal of the cur¬
rent at tho receiving instrument, wherovor it is.
Q. Jfr. Edison proposed to remedy that by tho butt
1682 trap? 0
A. Yes.
Q- Would that remedy it on n very long circuit without
the uso of a condenser?
A. 1 rom my experience I could not say.
Q- Is the patent to you for duplex transmitters expired ?
A. Ithnsnot
Q- When will it expire ?
A. It was granted in 1868.
Q. A fourteen-year patent ?
1638 A. It has boon extended for seven years.
tv loa Thto ? aV° SP°k0n Ub°Ut a lonS lino ; wlmt do you call
A. 400 miles, say.
Q Inside of 400 miles, or inside 800 miles, there is not
much troublo from tho static discharge ; is there ?
menis.11 W°Uld d°pend upon tLe (,clioa°y °f «>° ™tru-
unon J°U T1? ,mak° illBtrumenta that would work well
upon a circuit of that length?
A. I presume tboy might be made ; my recollection is 1684
that the Steam's duplex would work without n condenser.
Q. You no not know that the translation which has been
is correct ; do you ?
A. No, sir; I do not; I think it is substantially correct
(It is admitted that tho translation read is correct, sub¬
stantially.) ’
lie-direct by Mr. Dickerson. les6
Q. Have you that book called the omnibus bill tlioro ?
A. Yea
Q. Now, sir, leaving tho drawing nnd going to tho text
-- onso P«g“ 176 of tho book, nnd pngo 7 of tho defen¬
dants’ oxhibits, I rend, “Tho invention has for its object tho
simultaneous transmission of two different despatches or sig¬
nals ovor tho same lino wire from opposite directions, or in
tho sa.no direction.” I nlso call your attention to the para¬
graph at tile 84th folio, commencing witli the words, “Tito
relay A B may also bo placed at a number ofstntions, oto.’’ 1530
Inking those two statements together, will you toll us what
Hint conveys to your mind ? •
A. Thu possibility of further invention ; tho key IC‘
could bo placed at a number of stations in tho circuit; tho
poinrisiod relny could bo placed at a number of stations in
the circuit; it tho magnet A B bo altered ns suggested in
this paragraph, and bug traps provided and added to it to
provont a mutilation of tho signals, by changing the polarity,
it could also bo placed at other stations ; if placed at other
stations, nnd thus modified and another koy IC> placed at tiio ,-07
same station with tho koy IC— if tho thing wore thus in- 1037
stalled two messages could bo sout from ouo station and re¬
ceived at the other station.
Q. Wlmt is tho ohnraetor, as you understand it, of tho
devices applied to provont mutilation as they are stated—
what is tho effect of those doviees?
A. They are dcvicos to prevent the sudden retraction of
the armature when the direction of the current is rovoi’sed.
Q. With those descriptions and suggestions does case H
become diplcx?
1538 A. That thing would become diplex then; I didn’t havo
that in mind when I gave my answer before ; I bad forgot¬
ten all about tho text?
Q. Do you now wish to modify your answer after read¬
ing the text?
A. I would thus modify it, that if the olinnges suggested
wore made, and tbo necessary bug traps added, tho inven¬
tion could work ns a diplex.
Q. Is there any way known to you by which an electro¬
magnetic receiver can be worked in tbo delivery of a set
1689 of signnls ns a chemical roeeivor?
A. Not known to mo experimentally.
Q. Is there any known to you by any information that
you have?
A. No further than Mr. D'Infrovillo’s testimony.
Q. SupposoMr. D'Infrovilloto havo stated that an electro¬
magnetic rccoivor could tnko 600 words say from Boston to
Now York to be truo, is your opinion modified in respect to
tbo difloronoo botween tbo capacity of chemical paper re¬
ceiving signnls and an electromagnet?
1510 A. I should say not.
Q. I understand you to say that by tho addition of certain
improvements to case H it could bo diploxed ?
A. Tho improvements specified in tho specifications.
Q. Are there any improvements specified in tho specifi¬
cations by which it could bo dono ?
A. Perhaps I should sny that tho specifications indicate
1541 °^n,1°03 ,t'mt lniS'lt bo made, and tho doviccs .which would
be applied in following out that suggestion wero well
known. This form of bug trnp is tho result of what was
well known.
Q. At that time?
A. It was known to me, I think pretty well known to
tho world.
Q. For that purpose ?
A. For a similar purpose.
Q. "Whore was it used ?
A. I do not say it was used excopt in my laboratory. I do 1542
not say it was even woll known. It was known to me.
Q. Was it known to tho public?
A. It was known to me. I cannot say whether it had
conio to tho public notieo extensively or not.
Q. Do you know of any well known device by which caso
II could bo worked both ways at tho time it was invented?
A. I do not know of anything about tho time it was in¬
vented.
Q. Say at tho date of tho application, March, 1873 ?
A. I should want time to look it up boforo I answerod 1643
definitely. I should think similar bug traps appeared in
some of those onrlicr duploxes.
Q. You cannot state any ?
A. I could not state without fhrthor investigation.
Q. You cannot stato that thoro wero any othor woll
known dovicos ?
A. I should prefer moro timo to investigate that question
bolbro nnsworing it.
Q. Aro thoro any dovicos which you can now think of
which wero well known in March, 1878, by which eaao H 1644
could bo diploxod ns a practical and working sucouss?
A. I do not call them to mind at this moment,
Q, Nono that you can now romombor.
A. I do not think of any at this moment.
Q. By tho help of tho improvomonts shown in case 99 it
can bo so dono ?
As Yes, sir.
Q. Do you know of any automatic system wlioro thoy
prnoticnlly sond moro than 500 words por minuto as a prac¬
tical business matter ? 1545
A. I do do not know of any whore thoy sond it practi¬
cally ; no, sir.
Q. So that if you had an electro-magnet which would vi¬
brato sufficiently fust to send 500 words a minuto botwoen
hero and Boston, while it would not work as fast as auto¬
matic can theoretically, it would work as fast as it will prac¬
tically ?
A. From my own knowledge I would not liko to say how
fast it will work.
1546 Re-direct.
Q. At tlio clnto of tho amended application of caso H
March 18, 1876, and at tho date of tho patent, namely, April
27, 1875, were there any well known devices in public use
that would answer the description of that patent beginning
with tho words “ The relay A B could be placed at a num¬
ber of stations, etc." Do you remember when the quadra-
plex worked to Boston. Have you a memory of that?
A. Only ns stated there.
Q. Didn’t you see it worked to Boston then ?
A. I could not tell from my memory when I saw it.
Q. Can you remember whether you saw that quadruples
working prior to April, 1875 ?
A. I should think that I saw it, yes, sir.
Q. Assuming it to bo worked in Boston in October, 1874,
and from that out, tbon tho question I ask is whether tho
doviccs specified in cnscH, under tho titlo that Ihavo read,
wore not in publio use at tho time the application under
w noli that patent was taken out was made, and tho timo
when tho patent was granted ?
1548 A. Yes, of courso.
in any bettor position from having taken titlo through Mr. 1650
Mills, than if wo had taken titlo direct from Mr. Gould, as
Mr. Edison’s attorney. But we do claim, that at tho timo
of tho conveyanee to Mr. Mills, which is tho lltli of January,
1875, we had no notieo of any claim of tho Westorn Union
Company, and wo bought tho inventions in good faith, and
paid $30,000 for them.
Mr. Lowrey: I think then wo understand each other
rightly. Tho genornl claim of tho plaintiff is, that ho is n
Iona fide purchaser without notieo. That claim wo' are 1551
contesting here. That I understand to bo a fair concession
of tho point, and relieves us of tho necessity of calling a
witness.
The Court : Tlmt should appear on tho record, or olso it
should appear ns suggested by Mr. Lowrey, that Mr. Mills
took tho titlo at tho instance of tho plaintiffs, and took it
for their bonofit, which amounts to the sumo thing.
Mr. Lowrey: That I believod to bo tho fact 1552
Re-cross.
a d°vi00S 'v,liob y°u *m» into use botwoe
April, 1878, and October, 1875, wero Mr. Edison’s hive
tionp, wore they not?
A. I cannot say.
Q. You do not know but what they wero?
A. I do not know but what tlioy wore.
(Recess.)
19 "
After Recess.
i n iHn 1 record' t" ^ ^ ™ a question this morr
‘ ng d • 0Ur,°lnim wllio11 1 ™ very happy to an
ioot mot? °r “t'v 'S ‘ 1,8 1 Tho P]aintifl' purchased tho sul
of tho Wn t ir °On^70rBy wM»ut notieo of the elain
for o vl, m Ul’T TelograPh Company, tho defer la I
for a valuable oons.doration. Wo do not claim that wo an
Mr. Wheeler : My loarnod friend Bpoko about putting an
admission of that kind on tho record. Wo found a diffi¬
culty in framing an admission so ns not to make it too broad ;
and we, therefore, told him that wo did not fool ablo to put
such nn admission into shnpo. Wo aro porfootly frank to
state our claim, which wo hnvc done.
Mr. Lowrey : I considor it sufficient You do not claim
you aro innocent with a good titlo bccauso that soller had
Mr. Wheeler: Thore is one word more ; anything 1 liavo
said on that subject relates to tho titlo which wo. got through
Edison and not through Harrington. The title wo got from
Harrington did not oomo through Mills.
Gerritt Smith, boing reoallod by Mr. Diokorson, tostifiod
ns follows :
882
1554 Q. Dow nro tho diploxes used by the Western Union
Company quadruplex ?
A. In the majority of oases the differential system is
used.
Q. Look at pago 852 of Prescott's book?
A. That is the differential method.
Q. That is tho manner in which it is done?
A. Yes, sir.
Q, Can tho quadruplex be worked to Philadelphia with¬
out tho uso of the condenser, so far as you know by expo-
1655 ricnco?
A. My oxperioneo is that thoy cannot.
Q. Even to that distaneo?
A. The largest circuit that wo arcnblc to work practically
without a condonsor is 50 miles.
Q. That is the longest you can work without a con¬
denser ?
A. Yes, sir.
Oross-examimtion by Mr. Hodgos :
1666 Q. What quadruplex is it which you bnvo tried to work
to Philadelphia and oannot work without a oondensor ?
A. Tho arrangement of batteries as doseribod in ease
09.
Q. How about tho other devices which nro shown in case
99?
A There is that part of tho dovioes whiolt would be hko-
ly to bo most susooptiblo to tho dofeot of tho static balance.
Q. Aro tho devices all ns thoy aro in case 99 ?
A. No, sir.
BD ‘ Q. What changes nro thoro ?
A. Wo aro using in tho place of tho neutral relay n polar¬
ized rolny.
Q. Tho neutral relay is w’nero tho troublo of tho kick
occurs ?
A. No, sir.
Q. Tho neutral rolay in ease 99 is where the trouble from
the kick would occur, is it not?
A. You aro speaking of tho reeoiving end ?
1059
Q. Yes ; tho noutral relay is at tho receiving end ? 1568
A. Yes, sir.
Q. You lin vo not used that rolay in a quadruplex from
horo to Philadelphia, as shown in case 99 ?
A. I don't think wo have, sir.
Q. Nor with that bug trap ?
A. Not between New York and Philadelphia.
Q. Or any other circuit of that distance?
A. No, sir.
Q. Or loss than that?
A. Wo uso it on circuits of greater distance.
Q. Of that distaneo, or loss tlinn that?
A. Not to my knowledge.
Q. Then you nro not prepared to state, from experimental
knowledge, that that rolny nnd that bug trap used in a qua¬
druple.* would show any difficulty with tho kick on n cir¬
cuit of 100 miles or less ?
A. I think thnt it would not.
Q. You think it would not show any difficulty?
A. No, sir.
Q. In a circuit from horo to Philadelphia ? 1660
A. Yes, sir ; that is ns I understood you.
Q. You testified hero nt one time that you put tho qua¬
druplex into practical operation on tho Western Union
linos in 1874 ?
A. Yes, sir.
. Q. Did Mr. . Prescott givo any direction m regard to
that?
A. Ho did.
CJ. Ho superintended tho practical work of putting it
up? , ^
A. Ho gave directions in regard to tho preparation and
nvrnngcmont nnd accommodation of tho apparatus and bat
Q. Thoro is one of your answers given on your former
examination which, I think, did not quite correctly express
your idea. It is on the record that you said it was necessary
to uso in diplexing caso 99, tho differential system, the
Wheatstone balance or bridge system and tho condenser;
384 I
1662 did y°u mean t0 sl*y !t was ncccssary t0 uso a11 tliree of •
those?
A. I think, sir, my answer on that point was given in re¬
ply to the question what was necessary to quadruples and
not to diplox.
Q. Well, quadruples ; is it necessary to uso all three of
those?
A. Will you put your question now, plcaso ?
Q. Did you mean to say that in order to quadruples caso
99, to make a quadruples of it, it would ho necessary to use
15u3 both the Whcnlstono bridgo and the differential system of
duplosing?
A. I think I snid that either of them -
The Court: Not what you said before. You are asked
tho question now ?
A. It would not bo necessary to uso both ; yot thoy
could bu used.
■ Q. Then idl that would bo necessary to bo used would
bo tho Wheastono bridgo and the Steam condenser?
A. Yes, sir.
1664 Q' Alld tllG Wheatstone bridgo has been used for similar
purposes a good many years ago ; lias it not?
A. It has been used for tho purpose of electrical measure-
Q. Has is not been used for quadrupling tho Morso
system?
A. Not that I am aware of.
Q. Did you ovor hoar of Maron’s invention?
A. I have.
Q. What date was that?
A. I could not toll you, sir.
1666 Q. As far back as 1865, wns it not?
A. I don’t know, sir ; I couldn't say.
Q. Do you know whether that invention used tho Wheat-
stono bridgo for tho purpose of contrnploxing tho Morso
system — sending two messsnges in different directions ?
A. My impression is that he did.
Q. You don't know how fur back that is ?
Q. You don’t know,' but it was prior to 1870 ? 1666
A. I can’t say. ,
Q. Then, the only new thing which you mean to say
positively, must bo used to contraplox caso 99 ; that is to
make a qundruplex of it, would bo to add a Stearns' con¬
denser or some substitute for it?
A. As I have said, on a circuit of certain extent is whore
the condenser becomes necessary.
Q. Is or is not that the only now thing that would oo
necessary ?
• A. I cannot say ns to that.
Q. Then, you don’t mean to say that any otlior thing 1567
would bo necessary?
A. I mean to say that the condenser becomes one ot the
essential parts. .
Q. That or somo equivalent of it?
Q.’ That is all you mean to say is necessary ?
A. Supposing wo understood what other apparatus is
used besides tho condenser j I don’t know of anything else
that would bo necessary.
Q. Tho Stearns condonsor is ns old ns lai-i
A. Its application to tlio duplex I believe is. 1668
Q. And tho Edison niagnot is somotimes nsed for tlio
saino purposo, is it not. , ,
A. lam not famllliar enough with tlio magnet of which
5 O. Then you don’t know but what tho Edison magnet
would servo tho snmo purposo ns tho Stearns condenser i
A. I don’t know of tho Edison niagnot.
Q. You are not prepared to stnto that it would uotl
A. No, sir.
Iic-ilircct by Mr. Dickerson : 1660
Q. Do you know any such thing as a Edison magnet in
tho art of electricity 1
A. No, sir. • . ,
Q. When did yon first hoar that expression used T
A. In tho court room hero this morning.
Q. Don’t you uso in your quadruples both tho bridge
49
You uso tliom together 1
Yes sir: wliat is termed itlio combination.
The 'combination of the bridge and tho differential in
lame quadruples 1
' You' were asked about Mr. Prescott’s directions and
II Is one of Mr. Trcscottfs patented inventions used
,is quadruples of the AVestcrn Union Company 7
1571 George M. Fhcljis, Jr., being recalled by Mr. Lowroy, tos- '
tided as follows:
Q. Referring you to your first answer, whan you wo™
last on tho stand, and to your reference to a charge ol S O-,
under dato of August 20th, I ask you now to point out in
tho book that entry 1
A. It is hero on pngo 040.
Q. Please read it ?
A. “ One differential relay, three duplex transmitters,
two rolays braoketed. Edison, Miller — W. H., August
1B72 20, aggregating $102.” . .
Q. Do you wish to ninko. any explanation inspect to
its being found there instead of being, in its order in tho
book ?
A. Yes sir; tho order: for those instruments was l'io-
duced hero ; tho paper was marked borrowed ; tho whole
circumstance returned to my unhid since j they were bor¬
rowed and expected to bo returned ; not being returned
four or ilvo months later, I inquired of tho proper parties
what disposition should .be made, of the mutter, and wo
wore instructed to charge them up, ns they wero not io-
1678 turned! I held in tho meantime a slip to represent tins
entry.
Cross-examination by Mr. Whoolor :
Q. You say you inquired of tho propor pnrtios J whom
do you menu by that!'
A. Somo ouo at the general -office, I don’t remember at
this moment-
Q. You don’t know of your own knowledge that those 1674
were not returned 1
A I know they wero not returned to tho factory.
Q. ’toll don’t know that they wore not roturned to tho
supply department, of your own knowledge ?
A. No, sir. . , , .
Q. AVhnt is tho dato wlioro that is entered in tho book i
A. January 31st, 1874.
(J The dato of tho memorandum is August 20th, 1873 1
A. Yes, sir. , . . ,,
Q. Do you know whether that memorandum is m Mr.
Minor's handwriting ? 1575
A. 1 do not.
(There boing no more witnesses in attendance on behalf
of tho defendant, tho Court instructed tho plaintiff’s conn-
sol to proceed with tho rebuttal.)
' Qeorge B. Prescott reoallod for further cross-examination :
By Mr. Butler :
Q You tostifted on your examination in chief that ho- 1576
tween tho 16th and 20th of July, 1876, you went to , Mr.
Sorrell’s office, and had a consultation with him about tho
effect of these instruments to Harrington and Edison.
Will you state that conversation as you remombor ltf
(Objected to on tho ground that the cross-examination
has been closed, except as to tho matter about which ho was
interrogated yesterday, and that he was produced this
morning for tho purpose of cross-examination m that re¬
gard, and this is now matter which is sought to bo intro-
duccd. Question allowed.)
Q. State what is tho first .thing you remember on that oo-
casion. Give us a statement of all that you remember took
P' T i' recollect having somo conversation with Mr. Sor¬
rell in the month of January, 1876, in which some allusion
was made.
Q. State what was said.
1578
1579
1581
A. I cannot recollect anything about what was said. X
have an indistinct recollection that something wns said in
relation to ilio Harrington claim of thoso duplex inventions
in controversy.
Q. \\Thnt was said by you or by him ?
A. My recollection is very dim about it, but so far as it
goes, I should say that Mr. Sorrell showed me a copy of the
agreement and said that thoy made claim on the dupioxlhst
telegraph or automatic fast telograph.
Q. Did you look at that copy ?
A. I should presume so if ho showed it to mo. My re¬
collection is not very good about it.
Q. Have you ns much recollection of looking at tho copy
as you liavo of its being presented ?
A. I should think so, about ns muoli of ono as tho
Q. How, do you remember any answer that you inadci
or whother you mndo any or not V
A. My impression is, I said, 11 That refers to nothing
about duplex ; that simply refers to automatic."
Q. Did you go there to consult Mr. Sorrell on that ques¬
tion?
A. No, sir ; I didn’t go to consult him on that question.
Q. Have you any romembrauco of the purpose for which
you went there?
A. I think I wont onco in January to consult him about
tho rc-issuo of tho Steam’s patent.
Q. X mean on this occasion, I don't care about any other
time.
A. I cannot fix the timo in rcferonco to that.
Q. You fix tho occasion, can’t you fix tho timo with accu¬
racy?
A. I think it occurred sometime in an interview that I
had witli him during the latter part of January.
Q. I understood you to say that it was between tho loth
and 20th of January that you went to his office ?
A. I may have said about the 16th or 20th of January ;
I have no means of fixing tho date exactly.
Q. You did fix it at that date. Keeping iu your mind
that occasion, did you go there to consult Mr. Sorrell in re- 1682
lotion to tho agreements?
A. No, sir ; I never went there for tho purpose of con¬
sulting about tlio agreement on any occasion.
A. No, sir.
Q. Were you present the night of the 9th of July, 187*1,
when tho Times nrticlo wns propared by the reporter ?
A. I don't remember any preparation of the Times
nrticlo ; I have a recollection of a reportor coming into my
experimental room and witnessing an exhibition of tho 1588
qundruplox, but I don’t remembor his writing any article.
Q. Wasn’t it rend to you?
A. It may have been.
Q. Don’t you know that it wns?
A. I have no distinct recollection ; I think very likely it
Q. Did you not yourself mako alterations in it or direct
alterations to bo mado?
A. I havo no recollection of doing so.
Q. Lot mo call your miud to tho alteration ; whon writ- 1581
ton, didn't it say tho invention of Edison and Prescott, and
didn’t you alter it so as to mako it read the invention of
Prescott and Edison ?
A. I have no recollection whatever about it.
Q. You don’t moan to say it was not so?
A. I don't mean to say it w.is or was not? I havo no
recollection at all about tho ciroumstanco ; I think I should
remember it if it had been so.
Q. You wore asked about an interview iu whioh you
went into tho room and-fouud Mr. Edison seated on tho 1585
sofa and Mr. Orton sitting with him. Whero was that?
A. I didn’t say Mr. Orton was sitting with him ; ho wns
sitting iu his own chair, and Mr. Edison was sitting on tho
sofa.
Q. Whero wns that ?
A. That was iu tho President’s offico of tho Western
Union Telograph Company, 115 Broadway.
Q. I want you to fix that date as well as you can. You
1590
:'890
1586 wero asked when that interview took plneo, and you an-
sworcd the latter part of February, 1874. I want you to
fix that dato as nearly as you can.
A. I havo no means of fixing tlio dato precisely ; it was
some time beforo Mr. Orton went to Europe, which was on
the 28th of March ; I should think it was the latter part of
February.
Q. You havo nothing at all to fix tho dato ?
A. No, sir.
Q. At that time do you rcmombor whether Mr. Edison
1587 wns or was not doing anything with tho Western Union
Telegraph Company’s lines ?
A. I do not know, oxeept what Mr. Edison told mo.
Q. Can you givo mo a word that Mr. Edison said in that
conversation ?
A. I can toll you what Mr. Edison said bofore I wont
away.
Q. You rcoollcot scoing Mr. Edison in Mr. Orton's room
on tho occasion you havo referred to. Do you remember
what lie said at that timo?
1588 A. I don’t think ho said anything at all ; I don’t rotnom-
bor hearing him say anything ; ho went out with me.
Q. Wlint wns snid was said in his preseneo ?
A. Yes, sir.
Q. And ho satd nothing at all?
A. I don't recollect that ho snid a word.
Q. You say ho got apparatus there. How soon after that
conversation did ho got his apparatus thoro?
A. I think almost immediately ; Ignvo him a koy to my
experimental room.
1589 Q. What apparatus did ho bring ?
A. Electro-magnets, keys aud suoli apparatus ns is used
in duplexing.
Q. Without going into details, state whether it wns ap¬
paratus of his own invention ?
A. Yes, sir ; I bclievo it to be.
Q. When did you go to Key West ?
A. X sailed on the 18th of April.
Q. And was gono until when ?
A. I returned about tho 4th of May.
801-
After Reoes&
Mr. Lowrey : While waiting for tho witness, I have an
offer to make. Wo offer to show that tho report of the
Western Union Telegraph Company, signed by Mr. Orton,
which has been given in ovidenco, was published in tho
Telegrapher under tho date of October 17lh, 1874, and in tho
Journal of the Telegraph under tho date of October 15th,
1874, and that these papors aro those that have been spoken
of several times in tho trial, tho one being published by tho
Western Union Company, as testified to, and tho other, as I
think one witness snid, was an opposition paper to tho 1591
Western Union Company. Wo dosiro to lmvo tho benefit
of any notice which arises from these papers being published
in two telegraphic journals published in New York City.
Mr. Butler: Tho answer to that is, first, that if it wns
competent at nil, it wns competent in their original ease,
and they have closed. In tho next place, it would not bo
material if it wero offered in thoir original enso; it would *
bo a sur-robuttor.
The Court: I do not think it iB material. In regard to 1602
. tho other objeotion, tho ovidenco might como in in tho dis¬
cretion of tho Court.
Mr. Lowrey : Tito report which is in contains statements
or claims by tho Western Union Company in respeot to ne¬
gotiations going on affecting the quadruplex, and to certain
titles said to bo in that company in tho duplex. Now, wo
assume, and havo tho right to assumo, for tho purposes of
this oiler, that we havo proved, us a fact in the ease, that
wo did own tho duplex, and wero in negotiation for tho
quadruplex. That fact being proved, we may assumo that
persons in tho same general class ot business had i.ot.eo of
it. I cannot prove the fact by that means. Wo can affect
them by a general notoriety in a technical class journal liko
this. There are authorities on that question. I oiler this,
then, with tho object of affecting, so far ns tbo evidence will
havo that effect (which question, of course, tho Court will
1694 decide from its inherent force and the circumstances of its
publication), these parties with notieo that tho Wcstorn
Union Company, in an official dooument published to tho
world, and sent abroad to telegraphers through these jour¬
nals, had laid claim on those dates to this invention.
The Court: It will be rejected unless it is proposed to
follow it up by showing that this publication in the journals
came to tho knowledge of tho plaintiff.
Mr. Lowrey: That I cannot do.
1696 (Papers excluded.)
Mr. Lowrey: In addition to what I said about my offer
of tho papers in tho tclogrnpli journals, I now offer to prove
that they wore both published in the City of New York, and
have a general circulation among all persons interested in
H. Y. SUPERIOR COURT,
CITY AND COUNTY OF Xli\V YORK.
THE ATLANTIC AND PACIFIC
TELEGRAPH COMPANY
GEORGE B. PRESCOTT
AND OTHERS.
DEFENDANTS’ EXHIBITS.
McDanikls, Lira:
& Souther,
rtf' a Atforveya.
United States Patent Office.
THOMAS A. EDISON, OF NEWARK, NEW JERSEY, ASSIGNOR TO HIMSELF
AND GEORGE HARRINGTON, OF WASHINGTON, D. C.
\ IMPROVEMENT IN TYPE-WRITING MACHINES.
Sl'wlflc
To nil whom it may concern:
I Mo it known that I, Thomas A. Edison, of I
jewark, in the county of Essex and State of
low Jersey, lmvo invented nud mado an Iiu-
tiro vein out in Printing-Machines} and tho fol-
Ipwiug is declared to be a correct description
gf tlio snmo.
I Tliis invention is for printing by n tvpo-
iuecl iu n lino upon a sheet or web of paper
rod then moving such paper along so ns to
fruit upon tho lino below. This invention isdi-
flded iuto tho following principal dentures:
prat, mechanism for arresting u revolving
fpo-wiiecl with tho designated letter in posi-
to bo printed; second, tho means for
loving tho typo-wheel along bctwcon ono ini-
tension and tho next;. third, mechanism for
|mgmg tho typo-wheel back from tho end of
to lino so as to conimcneout tho beginning
I tho next; fourth, tho devices for impress-
fe tho paper on tho typo.- wheel ; fifth; tho
|ding devices that movo tho. paper the dis-
Wco betwoen ono lino and tlw next. '
>3y moving tho typo-wheol nlong tho liuo
GS? PaPer ‘l*o parts nro simplitied
U rendered more compact tlinn imthoso nm-
'"“s m which tho paper has been moved ;
a roll or wob of paper can bo omploycd
telogrnphio messago printed thereon by
.and cut off, .instead of writing out the
as now usual.
■,t;ldra'ring> Figuro 1 is 11 PIa» of tho
itivopartsottbe machine and pnrfrof tho
posed friction allows the wheel to continue its
revolution while tho shaft mid type-wheel arc
stopped. Upon tho typo-wheol shaft b arc
projecting pins or blocks 2, arranged spiral¬
ly, or positioned so that whon tho stop-pin 3
is brought iuto tho path of such block 2 tho
shaft b will bo arrested by such pin 3, with
tho letter or character corresponding with thu
key depressed in position for printing.
The means for moving tho pin 3 by tho'key
might bo varied; but I havo shown the key d
as acting upon a vertical bar, d', that lias a
piu ncting in a cam -jaw, 4, upon tho shaft e
that carries such pin 3; houco, upon the de¬
pression of any ono key tho pin 3 connected
with that key will bo moved into tho path of
tho block 2 upon tho shaft b, and properly stop
tho typo-wheel.
Springs d> aro cmploycd forrnising tho keys,
and the key will riso slightly without liberafc-
ing tho block 2, in order that thoro may bo
1 11010 lor pnppr to bo drawn away from the
type, as hereafter described, beforo the type-
wheel is again revolved. Tho flngcr-koys;for
convenience, mny bo in two ranges, ns shown.
Beneath tho raugo of lingcr-keys is a bar,/,
supported by arms from tho shaft />, so that
when any ono of tho flngor-kcys is depressed
the. bar /will bo moved, and, by tho arm and
piu 6, opernto tho foeding-bnr </, which is mado
as a forked inclined pawl, 8, (seo Figs. 2 and
4,) at tho upper end, that is pressed between
thespoeiug-pins 7 on the rack-bar A, and moves
1‘l“l 10 '"k® i»to tlieso ami hold tho
Vin !‘°° "l0"*’' "‘hen. the pawl i la mined
W^i!r^i^PoJf sa
mid allowlactSow Mm '> ,IiftinR 11111 mmo
r.ST.'A ip5«taS!^Rf
Ilm.nwTJ In 1,1 ? 3"u i o°Vt e <1 «oS /fl w ny ‘ fro m
opcrauVo ’ Jm'vl 10 b“m«o ngnin
tlio liand iovnr f/ ' Ldg,0 cnn 1)0 °l«ratcd by
tn lliA lm, - • 80 1,8 10 r°tum the type-wheel
S """‘5 of the line between one m?
tlm „re««- 10 "0Xtf Tbo devico for giving
bemMth the,t0vnl.C0“i“,8ia i",n I,ndd<id bar,
( I , » i , tjpe-whecl, and set in a frame in’
. Iiunt>. 0,1 ecnters-18, mid earrie* the
lettro r° e°i eteetro nmgnet p, and this
■ I , l f? e* giv cs the impression whenover
siirinAonthTrcstsim10 ViP°'"',,cc1' n,,d 11,0
the olppfrifn.;,.,..,';* 1 1° ®Vue» ail|l to in
tlirou-li tho 11,18 eircnit pnsscs, also,
:
touches the end of ,Jh WXj, tie '
wheel atop^So'tootliVboinVtH^ono^^tilo ‘
ssas^ws i
thidU 1110 la allowed to rev”™ so
,i ‘ : ,.!!? T!"Z 2o m,ly draw nwiiy the inmrea.
per nlong°from'oiio IhiMo* the 'next8 t*ie.'>!1'
■II the spring-pawls 28, hinged to a frame /
ltnhl ?i “B* 0,1 tl10 -fr, and said i awls
Bnrfaco in tl.olmcffid’ movement Ilia n‘°
o bell boiug struck at tho last orncarlylho last I
o movement of tho rack-bar A, by a projection, I
o 33, moving tho tail of tho hammer 31. The*
i operator moves tho papor forward at tho prop- §
s or tiuio by depressing tho-key n; or it might I
1 bo dono automaticnlly by a connection from I
- tho rack-bar ns tho type-wheel is drawn along, I
i I n order to ent off a picco of paper upon which I
i tlio printing hns been dono I provide a sta- 1
i tionnry shear, w, and swinging shear ic1, tho I
• latter being kept open by a spring so ns not f
r to interfero with tho paper ns it is fed along. J
i A rack or stand, ir', should bo supported!
i above tho finger-keys on the frames a' o', to I
hold tlio manuscript to be copied from, anil I
a grooved bar, ic5, Fig. 3, may also bo provided |
in which a strip of paper may lie, this strip I
having upon it telegraphic characters iu dob /
anil dashes, cither indented iu tbe paper or J
umdo iu colors in chemically-prepared pajier I
so that this may bo drawn nlung in said Iw 1
I claim ns my invention—
1. A typo-whoel moved along in the line
its axis by n progressive movement het*K
one impression nud the next so ns to pri
from sueli type-wheel in a line, substantial
as sot forth.
-■ Tlio rack-bar A and spacing -pins i.
combination with the spring-pawl 8, key
and typo-wheel a, substantially ns act fortk
3. Tho pawl 8, in combination with the rat
bar A, disconnecting devico i /, and stops
and 17 upon such rack-bar A, substantially
and for tlio purposes speoilied.
The lover i' and disconnecting devicei
iu combination with tho rack-bar A nnd tyi
wheel a, substantially as set forth.
!>. A pressure-bar sustaining tho paper
bo impressed below tlio liuo of printing,
combination with a type-wheel moved eiO
wise of tlio axis, progressively, between ol
impression mul tlio next, substantially nsspij
0. Tlio brenk-wiicel r, spring-linger s, »
electric circuit and circuit- breaker Sis',
combination with tlio type-wheel, impress!
bar, and elcctro-mugnet, substantially ns t
for tlio purposes Bet forth. ,
i. lliopnpor-febdiiig pnwis28 swinging"
tlio segments 27 upon tlio shaft 2!>, in com
aat-iou with tlio pawls 22 nnd stationary I
30, ns nnd for tbo purposes sot forth.
8. A typo-wheel and mechanism formov
tlio same in tlio direction of its axis beta
one impression and tho next, in combiiint
with impression meclimiism and witlinpni
feed actuated between ono lino of print
nnd tlio next, substantially as specified,
flint printing cnn be ilouo lino after lino ncr
33,'rty,
- - - — - T7~ A. EDISON.
Type Writing - Machine.
Mo. 133,841. // p>,#nl
fSectuM on yy.)
Dcfeiulnnt’s Exhibit 4,— April n, ion.
Specification describing n now and useful improvement in
Dim, ex Teleokaph Aitahatus,
vented by Thomas A. Edison, of the City o£ Newark, in
io County of Essex nnd State of Now .Torsoy.
The invention lias Tor its object the simultaneous trnns-
ission of two dispatches or signals over the samo lino wire
oin opposite directions, and consists in working the relays
, the distant stations by means of reversals of tho current
, the homo station while transmitting the signals from the
istant station by the iuorense and doorcase of tho strongtli
f the current of the line.
'I'lio accompanying drawing represents a plan view of my
nprovod apparatus for double transmission, showing coll¬
ection of home station with distant station.
A and 13 are electro-magnets of ecpinl strength, and
laced at equal distances from the armature lever L, pivoted
etwcou them. Both maguets are arranged with separnto
atterics j battery M B being connected witli magnet A,
nd with its positive pole to the lino ; battery 11 B' with
ingnet B being negativo to tho line.
Batteries li B and II B' are alternately placed into cir-
uit by the action of sounder lever S L, on double spr.ng
ontnet a, nnd then conducted to the earth.
The key lever S L is operated as usual by its battery S 13,
toy K and magnet S. _ (
Magnets A and B communicate over wire m m' and tho
ino wire with the distant station whoro C is a polarized re-
ay, to bo operated by positivo and negativo currents, K' a
dorse key and It a rheostat connected to key It and the
inrth at E'. Tho object of the key at K' and rheostat It is
o increase and decrease tho current upon tho line, so as to
dYect tho lever of tho relays A B. This increase and do-
ireaso of tho ourront does not affect the polarized relay 0,
so that siguals may bo transmitted by tho positivo and nega¬
tive currents of tho batteries at tho home station which
operate the polnrizod relay, while at tho samo time signals
4 may be sent to the home station, which nro caused by the
depression of key K' and consequent eflect on the relays
A li.
On closing the sounder lever S L, rclny B, and its battery
M B' are thrown out of circuit, and relay A and battery
M B, with its positive pole to the line placed in the circuit.
In like manner, when the key lever S L is open, magnet
A is thrown out of circuit, and magnet B, with its negativo
polo to line, thrown into the circuit. The armature lever
remains thereby constantly attracted to the electro-magnets
5 A B as the instantaneous transfer of polarity permits no
separation of the same.
If hotii positive and negative currents were pnssed through
one magnet only, a charge and discharge would ho produced
with the change of polarities, and tho armature would be
nttrnclod and repulsed.
The effect on the line is tho same whether n current of
one polarity or tho other is sent ; but ns each magnet re¬
ceives a current of the same polarity, reversal of tho current
takes place on tho line without affecting tho relays A B.
6 The polarized relay is self-ndjustnblo and follows the posi¬
tive and negative currents, wdicthcr tho tension of tho bat¬
teries is suddenly increased or decreased.
Tho polarized relay can he placed at a number of stations
on the line, and each will bo able to receive tho signal from
the transmitting station.
Tho simultaneous depression of tho keys K IC' at both
stations produces tho responding of tho polarized relay at
tho distant station to tho signals of tho homo station by re¬
versal of tho current, while tho relays at tho homo station
7 respond to tho signals of tho distant station by the deoreaso
and increase of tho strength of tho current on armaturo
lever L.
Having thus described my invention I claim ns new and
desire to secure by Letters Patent—
First. Tho armature lever L pivoted between relays
A B to bo operated by key It' and rheostat It, from tho dis¬
tant station by tho increase and decrease of tho current, sub¬
stantially' as described.
Second. The sounder lever S L, in combination with
doublo spring contact a, to throw nltorontoly the battories 8
M B and M B' with rovorsed polarities on tho lino for work¬
ing polarized rolnys at distant stations, substantially as de¬
scribed.
THOMAS A. EDISON.
Witnesses —
Paul Goepel,
T. B. MoSIIEli.
Ex. J. A. AV.
(No. 1.) U. S. Patent Office, fl
Washington, D. 0., May 3, 1873.
T. A. Edison,
Caro Munn & Co.,
Present.
Please find below a communication from tho Examiner
relative to your application for patent for duplex telegraph,
e H, filed April 20, 1873.
Very respectfully,
COMMISSIONER. 10
This application has been examined and is hereby re¬
jected.
Tho description does not fully sol out the construction
and function of tho devices and their combinations in tho
various circuits.
Moreover, ns presented, tho claims lack patentability. 1
Armature lovers pivotod between two magnets mo old. ;
merely adding that they are to bo operated in a certain
way, viz., by increment and dccrenso of currents, which 13
also old, does not confer patentability on tho claims. Seo
patent of G. Doyle, Jan. 81, 1800, and Eng. patont of Var-
loy, 3,453, 1802 j also, Amor, patent, J. O. Wilson, Moll. 4,
1873. • ,
Tho 2d claim is anticipated by tho ordinary duplex koy
u shown in [intents ol J. 13. Stearns, liny 14, 1872, anti other
Defendant’s Exhibit 5 _ April 27
"Washington, D. C., Jfay 22, 1878.
Hon. If. D. Leggett,
13 . Commissioner of Patents.
Sin— I hereby amend the specification in my application
of Letters Patent for Duplex Telegraph Apparatus (Cnso
H), filed April 20, 1878, by erasing all of specification ex¬
cept signatures, and substituting :
To all whom it -may concern.
Bo it known that I, Thomas A. Edison, of Newark, in
tuo County of Kssex and .Stale of New Jersey, have in*
vented a new and improved Duplex Telegraph Apparatus,
14 and I do hereby deolnro that the following is a full, clear
and exact description of the same, reference being had to
the accompanying drawing, forming a part of this specifies-
Ihis invention 1ms for its object Ihc simultaneous trans¬
mission of two despatches or signals over the same lino
wire from opposite directions, and consists in working tbo
relay at tho distant station by means or two batteries at tho
homo station, which batteries altornato with each other in
transmitting to the distant station, while for transmitting
15 ‘ho signal from the distant station the power of one of the
homo batteries only is used, and for tho duplex trnnsnm-
siontlm power of tho other home battery is employed.
Ike drawing represents apian view of my improved ap¬
paratus for double transmission d, . ! . - ' f
vith sepnrato batteries, tho battery M B being conneetocl id
vitli magnet A and tlionco to tho lino, while tho battery
II B- connects with the magnet B, and thence also to the
too. Tho opposite poles of the batteries M B and M 1>
jonnect respectively with tbo line, so that one battery is
jesitivo to tho lino and the other negativo to the same.
; The two batteries, M B and M B’ are equal in strength
and are alternately placed into circuit by the action of tho
lover S L of tho sending magnet, on a double spring contact
a, said contact being in connection with tho earth at Jt.
Tho lover S L is operated ns usual by its battery b B, koy 17
K and magnet S. . , • 1 ....
Tho magnets A and B communicate by wires m nml in
respectively, with tho lino wiro and the distant station,
where 0 is a polarized relay to be operated by the positive
nnd negative currents of tho batteries M B and M B.
At tho distant station is furthermore a Morse koy K nn l
a rheostat 11 connected to key K’aml to tho cnith at E.
Tho object of rheostat 11, when used in com.cet.oi. ..ill. -o
key K.', is to increase nnd decrcnso tho cm rent upon the
line, so as to eiVeot the lever L of the eleetro-magnets A B. 18
This increase and decrease of tho current ^esnotafiect
the polarized relay 0, so that signals may be — ■ *
by the positive nnd negativo currents of tho ballot 10s at tho
home station, which operate the polarized relay while at
tho same time signals may be sent .0 the homo s. ion by
tho depression ol key K’ nnd consequent cficet on tho elec
,r°OnnKn^ho lover SL the elect ro-mngnot B and its
bnttprv M B' are thrown out of circuit, whilo tho electro-
magnet A nnd battery M B arc placed into the circuit. In 19
like manner when the lover 8 L is open the tr^not A »
thrown out of circuit, nnd tho magnet B with 1 1-olar.ty
opposite to that of A thrown into tho circuit. Iho arma¬
ture lover L remains thereby constantly aUractccl totho
eleetro-magnets A B, as the ^'miteueous timtsfet 1.^
ity permits no separation of tho same. t
and negative currents wero passed through t ,
only, a charge and discharge would .ho P™1"0® u bo „t.
0
20 traded nnd repelled. The cited on the lino is the samo,
whether n current of ono polarity or the other is sent, but
ns caoli magnet receives a current of the samo polarity,
reversal of the current takes place on tho line without
affecting the magnets A B, Tho polarized relay C is self-
adjustable and follows tho positive nnd negative currents
whether tho tension of the batteries is suddenly increased or
decreased.
Tho polarized relay can bo placed nt a number of stations
on tho line, nnd each will ho ablo to rcceivo the signals
21 from tho transmitting station.
The simultaneous depression of the koys K and K' nt
both stations throws tho battery M B' out of circuit, and
onuses the lover 1 to bo alternately affected by tho current
of tho bnttory it B through A, and by tho counteracting
spring that connects with such lever, while it is evident
that nt tho distant station tho polarizod relay will respond
to tho action of tho battery it B. When in tho third place
the distant station alone is sonding a messngo tho lever S L
will hold the bnttory it B out of circuit, so that tho battery
22 it B' alone will act on the lover L nnd opernto tho samo in
conjunction with tho counteracting spring on such lover.
Having thus desoribod my invention, what I claim as
now nnd desire to secure by Letters Patent is:
1st. The combination of two equal but opposing bat-
torics it B nnd it B' nt ono station with tho magnets A B,
intermediate levor L, operating lover S L nnd lino wire, for
tho purpose of holding tho lover L immovable during the
transmission of a homo mossago, as sot forth.
2d. Tho combination of tho polarized relay 0, koy IC'
28 and rheostat It, with tho subject matter of the foregoing
clause to constitute a duplex tclogrnph instrument, as
specified.
THOMAS A. EDISON-,
per Munn & Co.,
Attorneys.
Neivakk, N. J., March 18, 1870.
Mon. Commissioner of Patents.
I hereby amend my application for pntent for telegraph
apparatus filed April 20, 1878, Case H, by erasing the 24
specification nnd amendments before filed and substituting
the following. Very respectfully,
THOMAS A. EDISON.
[Tho amendment thus filed is the one issued with tho
patent, ns below.]
Dcfcntlniit’s Exhibits 0 nntl 7.— April 27, 1S77.
United States Patent Office. 25
Thomas A. Edison, of Newark, N. J., Assignor to himself
and George Hakiiington, Washington, D. C.
1M MOVEMENT IN DUPI.EX TEI.EGI1ATIIS.
Specification forming part of Letters Patent No. 102,683, 2(j
dated April 27, 1876 ; application filed April 20, 1873.
Case II.
To whom it may concern.
Bo it known that I, Thomas A. Edison, of tho City of
Nowark, in tho County of Essex nnd State or Now .Torsoy,
have invented a now and usorul improvement m duplex
telegraph apparatus, of which tho following is a specifics-
Tho invention has for its object the simultaneous trails- 27
mission of two different dispatches or signals over the same
lino wire from opposite directions, or in the samo direction ;
and tho invention consists in tho transmission or positive
and negative currents over tho line to effect the reception of
one message, nnd tho increase nnd decrease of tho strengths
of these currents, either positive or negative, to efieet tho re-
ccplion of the other message.
Tho accompanying drawings represent a plan view of my
I
28 improved apparatus in -this ease, part of the apparatus being
placed at one end of tlio line and part at tlio other end.
A and B are electro-magnets of equal strength, ami
are placed at an equal distance from and on tlio opposite
sides of the armature lever L, pivoted between thorn. Both
magnets arc arranged with separate batteries. Tlio battery
If B is connected with the magnet A, and with its positive
polo to the line, and tlio battery M B' is connected with tlio
magnet B, and has its negative polo to the line Tlio bat¬
teries M B and M B' are alternately placed into tlio circuit
by the sounder lever S L and the double spring contact n,
wbioli is in contact with the oarth, Tlio key lever S L, is
operated, ns usual, by the local battery S B, key K, and
magnet & The magnets A and B are connected to the
main lino wiro and polarized relay 0, by the wires m and
in'. The polarized relay C, being either at tlio samo station
or at the distant station, is operated by the positive and
negative currents sent over the lino. K' is a Morse key,
and It a resistance coil or rheostat, connected to the kuy K
and earth E.
The objoct of tlio key K' and rheostat It is to iaercaso
30 and deerense the'strength of the current upon the lino, so ns
to nil’cct the lever of the relay A B, The increase and de¬
crease in the strength of the line current does not atleet tlio
polarized relay C, as this is dependent for working upon
the direction of the current or polarity, independent of its
strength, so that signals may bo transmitted by S L, bat¬
teries M B and M B', or by any other battery reversing de¬
vice, and these currents, noting upon tlio relay’ 0, causo its
tonguo to bo thrown to the right or left, according to the
polarity of the current transmitted. At tho samo time
31 another sot of signals may bo sent over tho samo wiro by
the depression of tho Key K', which causes a docrcuao in
the resistance of tho line, and a consequent increase in tho
strength of tho current on the line! and this increased
strength of current produces suilieient magnetism in either
A or B to overeomo tho attraction of its spring, and it is
drawn toward tho magnets.
On closing the key K the mnguot attracts tho lover S L,
throwing tho battery if B' and magnet B out of circuit,
and tho magnet B and battery M B, with its positive pole, 82
is placed in circuit and toward tho line. In a like manner,
when tlio key lover is not attracted by its magnet, tho mng-
nct A and battery M B is thrown out of circuit, and tho
magnet B and battery M B', with its negative pole toward
tho line, is thrown in circuit, tho nrmaturo lover L remain¬
ing constantly attracted (if K' bo closed) by either A or B,
as the instantaneous transfer of polarity permits no separa¬
tion ol tlio same.
If both positivo and nogativo currents wore passed
through one mngnot only, a charge and discharge would he 33
produced, with a cliango of polarity in tho iron cores, and
tho nrmaturo would bo drawn away from tho cores of tho
mngnot for an instant by its rctrnctilo spring, at tho moment
when tho cores wore changing their polarity. In this ar¬
rangement tho wires upon tho magnets, connections and
arrangement of batteries, are such that tho polarity of both
magnets are nover changed.
Tho polarized relay is self-adjustable, and follows the
positivo and negative ourronts, whether tho tonsion of tho
same is suddenly increased or decreased. 34
The polarized relay 0 can bo placed at a number of sta¬
tions on tho line, and each will be able to receive the signals
from tho stations transiniting positivo and nogativo currents.
The relay A B may also bo placed at a number of stations,
if A or B bo dispensed with, and other doviccs applied to
provent the mutilation of tho signals by change in tho
polarity of its iron core. '
I claim ns now, and desire to soourb by Letters Patent
Tho armature lovorL, pivoted between tho magnates
A and B, and operated by an increase and deerense m tho Sf
tonsion of the lino current, in combination with tho K nuU
rheostat R, for the purpose set forth.
2. The sounder lover S L, double spring contact «, an .
batteries M B and M B', arranged substantially as set forth,
and for tho purpose specified. _ . .
8. Tho combination, with tho main lino circuit, ot a re¬
ceiving instrument operated by changes in the polarity of
tho current indepondoutly of tonsion, with anothor receiving
10
6 instrument operated by olrangos of tension independent o(
polarity, means of changing tlio polarity of tlio current, and
means of changing tlio tension of the ourront, substantially
as and for tie purposo specified.
THOMAS A. EDISON.
■Witnesses :
Paul Gospel,
T. 13. Mosiier.
Defendant’s Exhibit 8 — April 27, 1877.
William Oiitox,
President.
Executive Oeeice, )
Western Union Telegraph Company, >
New York, February 0, 1878. )
® Dear Miller :
Say to Edison that I am ready to treat for bis duplex,
and that be may set it up iu our office at any time. Also
that 1 shall be glad to consider liis other propositions.
Very truly yours,
WILL11 ORTON.
N. C. Miller, Esq.,
iScc'y Gold and Slock Tel Co.,
ig Now York.
(n
Turriff
. /(cura-rJc. ’A..S. .A/j y. /S . / fry 3.
,/a/f. ni ^o/ici/or-
Pieces e foiiourtno^
f£ifin\on.L\ f inuenfion m Act/tityt JcLzc/r «■/> iii\.
y/l fundnmenlaC ftrcn.ee/tic of A u.plty. tcicc/ra.fth\\
ne.aa.ir-a.il /.a.fta-tx of /Ac afferj of /At ouJ -
c*oc?ua /ta.iir.r i a r n. cc/in. i -n.siru.7Ti ectn > , ’i-
J’AE ncni cfn/tor/cj/ii dun <C / j in l dr. s/ra <: At nt , of /At
sfftci a/ /Ac s/a fi Q cAarcfC of /At itnc te/oeux /At
JAl Minor esscrtjiet Is net ,. *t rri.fi t r/c in r-c a ’ for
f)Cactnc\ Mr ■6a/.irr<\ o// a,uk. <m M l i'Ac .
,/u.ec-k
a A or ;
S si.aU c/esertAc a. iarcfC nterreher of morAis on
(oAlC.A S to A -rioter C'x/C r inykn A ne% f r e/tet rce /orf.\
'V. d/i/n t n in /')aie i\/» ,
Defendant’s Exhibit 10.— April 27, 1877. <
Mr. M. :
Want order go in W. XT. nights to feel the pulse of mv
patients.
EDISON.
Defendant’s Exhibit 11.— April 27, 1877.
' ,r April 4, 1878.
Mr. Miller : 4
Plcnso inform Mr. Orton that I have accomplished nil I
ngreod to with ono exception, and nm now ready to oxhibit
and closo tho thing up. .
I oxporimented twonty-two nights; tried twonty-threo
duplex systems; nino woro failures, four partial sucocss,
and ton woro all right; ono or two of tho lattor worked
rather bad, but tho prinoiplo is good, and if thoy woro to bo
used could bo improved in detail; eight woro good, ono of 42
whioh requires no spccinl instruments ; a singlo wire run in
a pcoulinr manner in a Morso set of instruments transforms
them into a duplex. Ton models for ten different duplox
have boon dclivorod to Munn & Co., patont solicitors.
" WORKING PLAYED OUT WIRES."
Several experiments mndo on Washington wires after
heavy rain. With the ordinary relay tho signals came hard ;
with attachment to ordinary relay the signnls camo strong,
sharp and olear ; two models of this have boon delivered to 4j
L M. Scrrcli, patent solicitor. Ono attachment is being mndo
for exhibition. I will bo ready in fivo days or soonor.
“ WORKING LONG CIRCUITS."
Twonty-four hundred miles woro worked by mo at dif¬
ferent times without repeater, but so far I do not think tho
devices I hnvo nro of any practical value. I shall not givo
it up. Tlio patents will bo allowed iD about tlirco months.
In tho meantimo if I run across another duplex I will tako
steps to confine it in tho Patent Office immediately, so that
duplex shall be a patent intricacy, and tho intricacy ownoil
by tho W. U.
Please ask Mr. Orton what I shall do next.
EDISON.
P- S. — I linvo full records of all experiments to tho min¬
utest detail, with dates. I also go back on duplex prior to
Stearns'.
I’laiiitilT’s Exhibit 12.— April 27, 1877.
New York, April 23, 1878.
I horoby appoint Norman C. Miller my attorney, solo and
oxolusive, to arrange, sell, bargain, transfer, convoy for any
sum ho mny seo fit all my right, title and interest of every
conceivable description in eight duplex lolgli. patents,
obtained by Munn & Co., and throe duplex tolgh. and
two compensating relay patents, obtained by L. Sorrell, to
?ny corporation whioh shall go by tho name of tho Western
Union Telograph Co.
_. THOMAS A. EDISON.
Witness:
J. 0. Masea.
M. .
Defendant's Exhibit 13.— April 27, 1877.
I have tried to dato with make-shift instruments, seven
duplex, between Now York and Boston. Six of them
rhSrit'Ji;suventl1 was a 3atisfhct°r-v fiiii,ir°-
Defendant’s Exhibit 14. — April 27, 1877. 4S
For Identification.
New A UK, N. J., May 19, '74.
Geo. B. Pkkscott, Esq.,
metrician IF. V. T.
Deau Sir:
You probably think it strango that I have dono noth¬
ing with duplex. Tho fact is, Mr. Orton's sudden dis¬
appearance took tho bottom out of my boat, and I can do |
nothing without his or your cooperation. As I have a
great number of duplex combinations, whioh may bo of ifl
value to tho company in tho futuro, I dislike to loso all tho
time I have given towards perfecting them.
I make this proposition —
That you givo mo facilities and personal help to tost them \
and then tako tho patents out in our joint names, and then
present them to tho company for purchase on their merits
nlono ; profits, if any, to bo divided equally.
Yours truly,
THOS. A. EDISON,
10 and 12 Ward St. 60
Defendant’s Exhibit 16.— April 27. A. T. W.
Aftor an almost iufinito amount of experimenting I linvo
a duplex working in shop two messages in tho snmo direc¬
tion, way stations, etc. I want tho loan of tlirco duplex
sounders and one Phelps ordinary relay for a wook.
I am ready to put tho now duplox in operation first bo-
twoon Now York and Plain.
I have boon very sick in bod— have had tho most interest- 51
ing features of 4,000 nightmares in tho day timo. Cause-
root beer and duplex.
Defendant's Exhibit 15a.— April 27. A.T.W.
I have struck a now voin in duplox telograph ; “ no
EDISON.
My shop is so full of non-paying work that I shouhl liko
o saddle this on W. U. shop, where they arc used to it.
Called to see Mr. Proseott at 4 P. M. Left.
Defendant’s Exhibit 18.— April 27. A. T. W.
„ „ „ September 30, 1874.
G. B, Prescott.
Started to oquate duplex nbout ton o’clock P. M. ; No. 00
wire, eight gauge to Boston. Both mo and Smith bothered
in equating. Soon found that 00 was crossed ; changed it
for No. 81, eight guago; waited till twelve o’clock to got
men ; started for an hour’s trial at 12.03 P. M. ; messages
taken from ten days’ files; no picking.
Operators at Now York— Pullnm, Do Grnw, Cook, Bon-
noth Operators at Boston— D. Sanford, Davin, Colson,
<jtf~ ex _ . ^
Weather in N. Y. : No rain ; vory high wind.
11 “ Boston : N. East storm ; all day fine; drizzling
rain at 12:03.
Boston sent us 142 in one hour.
N. Y. sont Boston 125 “ 11
Worked well both sides.
Pound, nftor got through, thnt I was out of balance 380
ohms, as the wind had dried insulators on my end, whilo it
still drizzled in Boston. Total breaks, thirty-eight. Conden.
sere old and leaky.
EDISON.
s*^ /Z/r^rsi - - -
CX-^O JXcrz-e^ £*-o
3~ 4& 'y-^U't-v^Z-u^ S*f.
15
Defendant's Exhibit 20.— April 27. A. T. W. 56
[Probably day or two lator, Soptomber 80.]
Message, No. - Bettor -
The “Western- Uxion Telegraph Company
From - to - Shecl, -
Found qundruplox working when I oarae; Brown
balanced ; works 0. K. ; doing all the biz. ; works better
than ever ; found a bad connection last night.
Name of sounder — ^
Giant sounder of Pnrtriok, Bunnell & Co., Doy street, N. Y.
Would like to have them altogether ; they are a great
'assistance.
EDISON.
Defendant's Exhibit 21.— April 27, 1877. A. T. TV.
G. M. Phelps :
Plcnso make following instruments according to Mr. Edi- 68
0 Small relays.
6 Singlo sending sounders.
6 Hovcrsing soumlors.
6 Differential polarized relays.
24 Keys.
0 Switches.
6 Bridge Rheostats.
0 Equating Rheostats. 09
0 Spark coils, 400, 200, 100, 60, 26, 20.
12 Condensers.
0 Rcc’g condonsors, coil 1,000, 2,000.
Oct. 19, ’74. Rec’d 21 Oot.
G. M. P., Jr.
Theso are wanted with all possible speed. I moan in the
making. Wo’U put tho speod into thorn afterwards.
w. n
17
New Yoke, Dec. 10, 1875.
Whereas, Thomas A, Edison and George 13. l’reseott aro
the inventors of certain improvements in telegraphy relat¬
ing to dnplox and quadruples telegraphing, for which Let¬
ters Patent of the United States havo been applied for by
(51 said invontors, and
Whereas, said Edison and. Prescott havo agreed to assign
all their right, title and interest in and to said inventions,
and Lcltors Patent to the Western Union Telegraph Com-*
pany, provided the terms of pnymont for such assignment
and transfer shall bo satisfactorily adjusted between the said
parties and tho said telegraph company,
I, tho said Thomas A. Edison, hereby acknowledge tho
receipt of five thousand dollars, to mo in hand paid, in part
payment for my interest in tho said assignment nnd trims-
Witness: TUOS. A. EDISON. (silTT)
A. B. Brewer. ^
City and County of New Torlt, ss.
3 On this 21st day of January, 1875, before mo personally
appeared A. E. Brewer, to mo personally known, nnd known
to me to be the subscribing witness to tho foregoing instru¬
ment, who, being by me duly sworn, said that he resided in
the City of Brooklyn, in tho State of New York ; that ho
was acquainted with Thomas A. Edison, and know him to
be tbe person described in, and who executed said instru¬
ment and that he saw him execute and deliver the same,
and that ho acknowledged to him, said A. E. Brewer, that
ho oxccuted nnd delivered tho same, and that thereupon tho C-l
said A. E. Brewer subsoribod his name ns a witness thorcto.
II. M. UAIGH,
Notary Public ,
N. Y. Co.
Defendant’s ExhlbltNo. 23.— A. T. W. April 27, 1S77.
New York, Dec. 17, ’74
T. A. Edison.
You aro authorized to mnko twenty sets of qundruplox (55
complete, for twenty cirouits, all to bo finished nnd delivered
within fifty-five days from date. The finish and workman¬
ship to ho equal to those mndo hy G. M. Phelps, nnd tho
cost of oaoh sot not to oxcccd tho co3t of tho sots already
WILL” OllTON,
President.
Defendant’s Exhibit No. 24.-A.T.W. April 27, 1877.
Our duplex worked from 7.30 P. H- last night till 11.02 63
P. >f. without a single hitch. Best yot. Aftor 11.02
worked double to Chicago, doublo to Bullalo, nnd Buffalo
doublo to Chicago on regular business just tho same. Alter
tho line mon oil Iirio got through moving tho wire wo uso
on now set of polos wo will work right along. They
crossed wire to day about ovory twonty minutes. I need
10, 9, 8, 7, 0, 6, 4, 8 or 2,000 dollars— any ono you would
like to advauco.
EDISON. 37
19
08 Defendant's Exhibit 25 — A. T. W. April 27, 1S77.
Executive Office, )
Western* Union Telegrawi Comi'anv. }■
New York, - , 187 )
QUO. H. MUMPORI),
I will so ikUI to llio present quadruples to moot various
comlitions now existing within tlio next six months, ns well
ns an important improvement to it in a direction which I
00 will not now name, that no porson connected with your
company can say in tlio future that too much money was
paid for the invention.
take 1-20 th of the nverngo cost of maintenance of 50,000 72
miles of wire for 17 years. Ono third down, and die bal¬
ance in yearly payments during tlio above mentioned
period. Half of such payments to cease tlio moment any
other person shall invent and 'put'into practical operation a
quadruples (not infringing our patents) upon a circuit of
400 miles in length.
Yours, etc.,
THOS. A. EDISON,
GEO. B. PRESCOTT. 73
Defendant's Exhibit 28.
Defendant’s Exhibit 2G.-A. T. IV. April 27, 1S77.
TWO PROPOSITION’S.
i lst- Wo will take twenty-five thousand down and twenty-
five thousand in six months for all patents, and a royalty
iO on quadruples of $108 per year for each circuit created.
2d. We will taka twenty-live thousand down for all
patents and a royalty of $233 per year for each circuit ere-
Defendant’s Exhibit 27.-A. T. W. April 27, 1877
New York, Dec. 18, 74.
71 Hon. Wm. Orton,
Cres'l II*. V. Tel. Co.
Dear Sir : Your company bus over 25,000 miles of wire
which can now bo profitably “ ipmdruplexed.”
Considering those 25,000 miles to be already duplexed,
the quadruples will create 50,000 miles additional.
. yT our Palei|b* aml oJVurtij in protecting the Company
IU v.e u.u»pwly of the same during their life- we will
January 19, 1876.
Thomas A. Edison, Esq., and George B. Prescott, Esq.
Gontlomcn: Referring to tlio negotiations and arrange-
meats heretofore niado botween you nnd tlio Western Union ,4
Telegraph Company for tlio salo and transfer to that com¬
pany of all your patonts rolatiug to the duplex and qundru
plex tolegi.ipliy, subject to definite ascertainment of the
componsation to bo paid, and especially to 1 10
writing made by you on or about the 30tl. day of December
I lS‘‘'lsfc Wo "will take twenty-five tliousand down, and
“twenty-five tliousand in six months for nil pntonts, and a
“royalty on duplex of $100 per year for each circuit ^
II created ;
“2d Wo will take twenty-five thousand down for al
“patents, and a royalty of $233 per year for each circuit
“ created
I hereby notify you, on belmlf of tlio Western Union Tele¬
graph Company, that the proposition for compon ntion
Tovo quoted, and by you marked “ 2d,” is hereby accepted
ns made, and tbo company is ready to close tlio business a
your earliest convenience, and to make all tbo pay men
■20
'21
76 called for, upon receiving from you proper assignments and
transfers of the said patents.
Yours, very respectfully,
WILLIAM ORTON,
President.
Defendant’s Exhibit 29.
Agreement for mutual releases this day entorod into be¬
tween tiro Western Union Telegraph Company, of the ono
part, and Thomas A. Edison of the other part.
Whereas, legal controversies have arisen and now oxist
between tho parties in respect to certain inventions made by
said Edison, which inventions wore tho subject of an agree¬
ment between said Edison and George B. Prescott, (fated
August nineteenth, ono thousand eight hundred and seventy-
four, and subsequently of negotiations between tho company
upon tho ono part nnd tho said Edison and Preston upon tho
78 other part, whoroby tho' Baid company sought to purchaso
from Edison nnd Prescott tho solo title to tho snmo, and all
Letters Patent to bo issued thorofor, which negotiations tho
company claims did result in a contract binding upon said
Edison nnd Prescott for tho conveyance of all their right
title nnd interest in audio said inventions and Lettors Patent
issued thereon, but nil which claims said Edison denies nnd
resisls, and refuses to make any furthor conveyance to tho
satd company of his interest in said inventions or Letters
Patent, or any part thereof, in consequonco of which refusal
79 an notion has been bogun by tho company in tho State of
Low Jersey against the said Edison and Prescott to onforco
specific performance of tho contract which it asserts •
Now, in consideration of tho premises, and tho mutual
promises nnd rolcases herein contained, it is agreed by each
of the parties hereto as follows:
-First.— Tho Western Union Telegraph Company horeby
rcleasos tbo said Edison from any claim which it may now
or at any time horeaftor have against him for pecuniary
damages for tho breach of contrnot by it alleged, ns abovo 80
slated, over nnd above tho amount of two hundred nnd fifty
dollars, and ngreos not to proscoutc tho said Edison for such
pecuniary damages for any amount exceeding two hundred
and fifty dollars, nnd not to prosecute him for any amount
whatever, unless such prosecution shnll bo, in tho opinion of
its counsel, accessary or convenient, in order to detormino at
law some of tho rights of tho parties in respect to the
premises.
Second. — Tho said Edison hereby rolcases tho Western 81
Union Telegraph Company from all claims which ho now
has or may hereafter lmvo against it for any further payment
on account of tho inventions or Lettors Patent abovo referred
to, or any right or interest thoreln which tho said company
may succeed in establishing or maintaining, it being under¬
stood Hint neither party intends in any way to waive or
compromise his claim or defence in respect to tho contro¬
versies abovo recited, oxcopt ns heroin expressly staled.
And said Edison also horeby oonsonts thntsnid Gcorgo B.
Prescott may assign any interest wbioli ho may now or 82
horeaftor have in said inventions, or Letters Patent thoreon,
to the Western Union Telegraph Company, and does for
himself hereby assign nnd set over to tho Western Union
Telegraph Company all his now remaining interest, if any,
in tho said inventions or Letters Patent granted or to bo
granted thoreon, nnd does further stipulate, upon tho ro-
quest nnd at tho chnrgo of tho said Western Union Tolo-
graph Company, to execute and dolivor to them complete
assignments of all the remaining interest, if any, which
may, by the final judgment of any competent court, bo do- 83
cidod to bo in him at tho date of this instrument, but it boing
also furthor understood that this contract docs not and is not
intended to affect tho rights or interests of any other person
or corporation to whom tho said Edison has heretofore
assigned interests in tho said inventions or Letters Patent.
In witness whereof, the said Western Union Tolegraph
Company has caused its common seal to bo hereunto affixed,
and its corporate name to bo hereunto subscribed by tho
22
1 lmml of its President, and the said Edison lias hereunto set
his hand and seal, tho fourteenth day of December, in the
year one thousand eight hundred and seventy-five.
The Westeun Union Tkeeguai'ii Company,
By WILLIAM OUTO.V,
President,
A. E. Biieweh,
Sce'ij,
THOMAS A. EDISON, [i, s.]
Witnesses :
5 Thomas 0. Millf.h,
Geohge F. Fagan.
Dcfcndnnt’s Exhibit 30.— May 3, 1877.
| eg 2~Y- Agreement between Edison tmtl Prescott.
This memorandum of an ngreomont made tho 9th day of
July, 1874, by and botweeu Thomas A. Edison and George
0 B. Prescott, witnessed) :
Whereas, tho said Edison and Prescott are tho joint in¬
ventors of certain improvements in telegraphic apparatus,
described as magnotic duplex apparatus, being tho inven¬
tions and improvements moro particularly described here¬
after, for which inventions thoy are about to npply for Lot-
tors Patent of tho United States, to be issued to them jointly;
And whereas, it is desired by both parties to enter
into cortain engagements with cncli other ns to their rcspcc-
j7 tivo interests in such patents, and in tho use and benefit
thereof; .
Now, in consideration of ono dollnr to oaeli of said par¬
ties by the other paid before the sealing and delivery hereof,
and tho receipt of which is hereby by each of them acknowl¬
edged, it is covenanted and agreed by each of said parties
- with tho other ns follows :
1. That tho improvements and inventions of which they
nro tho joint inventors, and ill respect to which this agree-
mont is made, are all those inventions for making multiple 88
transmission of magnetic signals for use in telegraphy which
nro described in twelve several specifications now in tho
lmnds of George M. Phelps for tho purpose of making mod-
■ els of tho machinery whereby such inventions can bo oper¬
ated, and being all the inventions of said parties whereby',
at tho same time and on tho snmo wiro, ono message may bo
sent in ono direction and ono message in the opposite direc¬
tion, or two messages at onco in the snmo direction ; or, at
tho same time and on tho same wire, two messages may bo
sent in ono direction and two messages in tho opposite di- 89
2. That both of thorn shall lmvo an equal, undivided in¬
terest in all future improvements of cither of said inventions
which may bo mndo by cither of thorn, and Hint, if it bo
necessary, in order to sccuro such interest to cither, tho otlior
shall make an assignment and transfer of such interest to
him in duo form, sufficient to vest such interest in him, and
to entitle it to bo recorded in tho United States Patent
8. That both of tho parties shall lmvo an oqunl undivided 90
interest and bo joint grantees of all Lettors Patent of tho
United States or of any foreign countries which may bo
granted for all or nny of said inventions or of any Tuturo
improvements thereof, and of all extensions and reissues of
nny of such Loiters Patent. ,
' 4. That, whereas, Edison has heretofore oxpondod $1,125
for models and pntont feos, tho bonofit of whioh ho con¬
tributes to the common interest, and waives reimbursement
of that sum or of any part of it, Prescott hereby agrees to
pay solely and without contribution from Edison all tho 91
I future expense and cost of specifications, drawings, models,
•ft. Patent Office fees, and patent solicitors and agents fees, and
I nll other charges incident to tho procuring of Letters 1 atent
for any of said inventions. . ,
i 6 That neither of said parties will soil, assign, or othor-
I wise dispose of the whole or nny part of his interest tin .stud
I inventions or Letters Patent therefor or any of them with-
| ut tho written consent therolo first obtained of tho othor
24
92 G. Tlmt neither of said parties will himself manufacture,
use or sell, nor grant liconscs or the right in any way to
any other party to manufacture, use or sell any of the said
inventions or any improvements thereof, or any machine
embodying an article containing any of said inventions or 4
improvements or protected by any of said Letters Patent,
Without the written consent first obtained of the other
party.
7. No saio of any of the said inventions nnd no license
or right to make or use the same in any way shell ho made
93 or given except at a price to which both parties agree, nnd
all net profits shall bo equally divided botween the parties ,
hereto.
8. Tito covenants nnd provisions of this agreement bind¬
ing cither of tho parties hereto shall also bind his oxccutors,
administrators nnd assigns.
In witness whorcof, the said pnrtios hnvo horounto sot
tlioir hands nnd seals tho day and year first nbovo written.
THOMAS A. EDISON, [seal.] '
GE011GE B. PllESCOTT. [seal.]
94 Scnlod nnd delivered )
in tho presonce of )
11. H. llOOIIESTElt.
County of New York, ss.
On this ninth day of July, in tho year ono thousand eight
hundred and soventy-four, beforo mo personally eanio;'
Thomas A. Edison nnd Georgo B. Prescott, to mo known
to be the individuals described in nnd who cxocutcd tho
foregoing instrument, and severally noknowlcdgod that they
05 executed the samo for the purposes therein mentioned.
B. H. llOOHESTEll,
Notary Public,
N. Y. Co. (84.)
Defendants’ Exhibit 31.— May 4, 1877.
TEST OF AUTOMATIC SYSTEM OF TELEGBAPHY
BETWEEN NEW YOUK AND WASHINGTON.
Office of tiie Automatic TelegbaW Co.,
New Yoiik, January 28, 1874.
The President of tho Western Union Company having
sot forth, in a published letter, to tho Postmaster-General,
uudordato of December 27, 1873, concerning the nutomntio Q7
or fast system :
1st. That tho nutomntio system is slowor than tho
Morse.
2d. That it requires five times ns many operators.
3d. That consequently it is more expensive.
Tho nutomntio company doterminod to test tho accuracy
of theso statements by a public demonstration ovor their
lino of ono wiro between Washington and Now York.
The trial took place on tho evening of tho 27th lust. _
By invitation, tho olcctrioinn of tho Wcstorn Union 08
Company, Mr. Geo. B. Prescott, wns present m Now York,
and Mr. Whitnoy, manager of tho Western Union olhoo,
Washington, D. C., was at that end. In addition, thero
were present in tho Now York oflioe, Hon. Hiram Barney,
Gen. J. tt Wilson, H. G. Pearson, Assistant Postmaster,
nnd Mr. Hind, mu.., also of tho Post-office Department,
New York, J. G. Smith, Gouornl Superintendent of tho
Franklin Telegraph Company, nnd several others | and in
tho Washington office, Mr. Linos, of tho Post-office De-
pertinent, and Cnpt. Howgato, United States Signal Corps, 99
and others.
The matter transmitted wns tho Presidents Into inessago,
with- tho Spanish protocol attnohed, numbering 11,140
words • it having been selected in consequonco of the de¬
claration that its transmission over eight wires, by the
Western Union Company on Deeemher 2, 1878, in
sovonty minutes, was a feat unparalleled in telegraphy.
26
100 Tho work commenced in Washington at 6:89 P. M.,
tlirco minutes dillcronco in time of oommoiicing, as re¬
ported in New York and Washington, hut whole timo
occupied tho same. The document was coined complete in
New York at 0:48 P. M., occupying in all but 69 minutes,
ns against 70 minutes, tho time consumed by the Western
Union Company. The average time was 551 minutes, as
against 69 minutes by tho Western Union Company.
The automulic used but one wire ; tho Western Union
Company used eight,
101 Tho automatic used ton perforators, thirteen copyists and
two Morso operators, ns against sixteen export Morse ope¬
rators by tho Western Union — tho average pay of per¬
forators and copyists being $10 per month — all of which
details are shown in the accompanying report.
In tho demonstrations made, let it bo borno in mind that
on the one side tho work was dono by tho ablest exports in
tho world, and a company with years of experience. On
tho other side, except tho Morso operators necessary to
manipulate tho wire, our forco had not that experience
102 which is requisite for expertness.
Tho people are interested only in knowing whethor tho
capacity and economy of the automatic system are to inure
to their benefit, Tho following comparison of our charges
with the tariff of tho Westorn Union Company, is our
reply:
Automatic Tariff.
New York, Philadelphia, Baltimore, Washington. Uni¬
form charge, 25 cents for 20 words.
108 Western Union Tariff.
Now York to Philadelphia, 20 words, 60 cents.
' “ “ Baltimore, 20 words, 70 “
“ “ Washington, 20 words, 70 “
And these advantages will bo extended relatively ns wo
extend our circuits.
GEORGE HABRINGTON,
President.
r
General Office of the Automatic Telegraph 1 104
Company, 66 Broadway, J-
New York, January 2S, 1874. )
lion. George Harrington, President.
Sir : I respectfully submit tho following report of tho
work done in tho demonstration made on Tuesday ovoning,
January 27th, as per your instructions of prior date. Tho
matter selected for the purpose was tho President’s into mes¬
sage and the Spanish protocol.
STATEMENT. 105
Matter transmitted . 11.130 words.
Length of circuit . 281 miles.
Conductors used . 1 wirc*
. . I Morso operator . 1 25 oporativi
Washington, j perf0rntiiig operatives. . .10,
. t Porforatingoommonoed... 5.80.. 4oi Total
Washington. j perforating completed . . . 0.24} . time,
,r , Copying commenced. .. . 6.4- .. . u“
Now York, i rwinv comnlotcd . 0.48.. 66 mins.
Cost.
,, . $100 por month.
Morso operators . . . 9 40 “ “
Automatic operatives .
Tho characters wore perfectly legible
and wore copiod with great facility.
Tho avcra"0 timo during which tho
lives wore actually at work was fortyfiv
and well dofinod,
perforating opera-
e nnd a half min-
in averago per operative, poi mmuie, in
^VTlio°avorago timo of copyists was fifty minutes, making
an average por copyist por minuto of seventeen words.
107
108 Unlike the Western Union Co. wo hnd no largo corps of
operators from which to select our working force, but wero
compelled to utilize all, good, bad and indill’eront, which
makes it proper to call special attention to the above an
alysis made. ■
The whole time consumed was sixty-nine minutes, as
against tho published record of seventy minutes by the
Westorn Union in their late effort,
Tho average time occupied by tho Automatic was fifty-
five and a half minutes.
109 The average timo occupied by the Western Union (ns re¬
ported) was fifty-nine minutes.
An unfortunnto defect in tho paper caused much delay
in tho- transmission, otherwise still less timo would liavo
been consumed. No nttempt, however, wns mndo to attain
a high speed of transmision on this occasion, ns thnt point
hnd already been yielded and incontestably provod in tho
presence of tho Hon. Jno. A. Crosswoll, Postmaster-General,
and numerous otlior gontlcmon, including Senators and
Representatives in Congress, on the evening of December
110 11th, 1878, when wo transmitted somo 1,200 words over
our own wire from Washington to Now York in twenty-
two and half minutes.
Our operatives wero congregated at 'Washington and
Now York on Monday, January 20th, and wore tested for
tho first timo on tho evening of thnt day. I call attention
to this in anticipation of tho charge thnt tho timo which has
elapsed since tho publishing of tho messago has been
provod by our operatives in practising upon it. v, :*
With tho experience gained in this demonstration I am \jftl
111 confident that in another wo could readily dispense with at j|
least two perforators and three copyists, and yot perform
like amount of work.
Respectfully,
E, H. JOHNSON,
General Manager.
1
hi
New York, January 28, 1874. 112
Wo wero present in tho office of the Automatic Telegraph
Compnny, last evening, whilst they wero receiving tho Presi¬
dent’s messago and the Spanish protocol from Washington.
At 5:39 P. hh Washington signaled thnt the perforating
had commenced.
At 5:48 tho first portion of tho messago was received and
handed to the copyists.
At 6:42 tho last portion was reooivod.
At 6:48 tho copying was finished, tho whole timo occu¬
pied being 69 minutes. 113
There wore thirteen copyists in the room, but wo noticed
that two or threo wero unemployed a portion of tho time, so
that had all been constantly employed there would hnvo beon
several minutes saved in tho aggregate.
Tho writing wns perfectly , logiblo and the copyists trans¬
lated with great facility.
(Signed),
JAS. G. SMITH,
A. G. Sujtf. A. it P. anti Franhlin Telegraph Cm.
H. G. PEARSON, Aesistant Postmaster, N. Y. 114:
EDWARD W. SERRELL, O. F.
JAMES II. WILSON {of Winslow it IPiVson).
HIRAM BARNEY.
Office Automatic Telegraph Co,, 1
Washington, D. C. j
E. H. Johnson, Esq., General Manager.
At the tost whioh took plnco on Tuesday ovoning, Janu¬
ary 27th, the late annual message of tho President, togother
with the Spanish protocol, amounting in all to eleven thou¬
sand one hundred and thirty (11,180) words, wns perforated
by ten perforators, and transmitted automatically by ono
Morso operator, in tho following timo:
Perforating eommoneed. . .5.36 P. M. 1
Perforating completed _ 6.21 J P. M. f
Transmission eommoneed . 5.40 1
Transmission completed . 6.39)
Timo, 454 minutes.
Time, 69 minutes.
110 • The above is New York time, as computed by Washing¬
ton Observatory time.
Respectfully,
T. B. DELANEY,
Manager.
Having witnessed this test throughout, we can certify to
tho correctness of the nbovo statement.
ROBERT D. LINES ( of Post-office Department).
D, J. GIBSON, U. & A., Acting Signal Officer.
H. W. HOIVGATE, U. S. A.
J. H. LAl'HROP.
Defendant’s Exhibit 32 _ May 11, 1877.
118 [Copy.]
New York, Dec’r 30, ’7-1.
It is lioroby understood that tho undersigned will heart¬
ily cooperate in concluding au alliance botwcon the A. &
P. Tel. Co. and the Automatic System, on tho general
bnsis following:
A. k P. to increase her capital to $15,000,000
119 Automatic interests to roeeivo <1,000,000
To remain in Treasury, . 1,000,000
$5,000,000
Tho 14,000 Shares A. k P. now in tho Co.’s Treasury
to bo distributed to tho A. k P. Stockholders as a dividend.
Automatic System covering Patents, Contracts, etc. etc. to
bo turned over to A. k P. Tel. Co. Management to bo
Gen'l T. T. Eckert to be President.
T. A. Edison to bo Electrician.
D. H. Craig to organize tho nows Doplmt.
Tho Automatic are to coneludo tho ponding Contracts
with Eric, P. R. R. and B, k O. k turn thorn over to A.
& P. Tho A. & P. Tel. Co. to nssunio tho liabilities under
said contracts. Automatic to lmvo representation on Ex¬
ecutive Conimittoe. l!
Jay Gould. Josiaii C. Reiff. Jno. MoMauus.
Defendant’s Exhibit 32n.— May 11, 1877.
Libor H‘» p. 138.
Whereas Letters Pntont of tho United States havo been
duly granted for inventions of Thomas A. Edison, of Now-
ark, N. J., ns follows: j
No. 121,601, dated Dec. 5, 1871, for an Apparatus for
Perforating Paper for Telegraphic purposes.
No. 128,984, dated February 27th, 1872, for Telegraph
Apparatus.
No. 124,800, dated March 22d, 1872, for a Tclcgrnphio
Recording Instrument.
No. 138,841, dated Deo. 10th, 1872, for a Typo Writing
Machine.
No. 132,456, dated October 22d, 1872, for Apparatus for
for Perforating Paper for Telegraph use. II
No. 182,456, dated October 22d, 1872, for Paper for
Chemical Telegraphs.
No. 133,019, dnted November 12th, 1872, for an Elec¬
trical Printing Machine.
No. 134, 867, dnted January 14th, 1878, for Improve¬
ments in Chemical Telegraphs.
No. 184,868, dated January 14th, 1878, for Electro
Magnetic Adjuster.
124 No. 141,772, dated August 12lb, 1878, for Telegraphic
Circuits.
No. 185,581, dated February 4th, 1878, for Telegraphic
Circuits.
No. 141,776, dated August 12, 1878, for Telegraphic
Circuits.
No. 160,848, dated May 12, 1874, for Telegraphic
Circuits.
No. 141,778, dated August 12, 1878, for Circuits for
Chemical Tolographs.
125 N<v 141'775’ doted August 12, 1878, for Apparatus for
Perforating Paper.
No. 141,774, dated August 12, 1878, for Improvement
in Chemical Telegraphs.
No. 141,777, dated August 12, 1878, for Telegraph
Instruments.
No. 150,847, dated May 12, 1874, for Receiving Instru¬
ment for Chemical Telegraphs.
No. 147,812, dated Feby. 10, 1874, for Apparatus for
Perforating Paper.
ion 147>814, dated Feby. 10, 1874, for Circuits for
Chemical Telegraphs.
No. 147,818, dated Feby. 10, 1874, for Improvement in
Chemical Telegraphs.
hio. 147,811, dated Feby, 10, 1874, for Improvements in
Chemical Tolographs.
No. 161,209, dated May 26, 1874, for Automatic Tolo¬
graphs.
« l-.fl I3*0'. i68’ 848. dated Novombcr 17, 1874, for Duplex
— 1 1 i Chemical Telegraphs.
127 „,'Na. 160'402’ d,ltC!d ltnro11 2. 1875, for 'Solutions for
Chemical Telegraph Paper.
No. 160,403, dated March 2, 1875, for Solutions for
Chemical Telegraph Paper.
No. 160,404, dated March 2, 1875, for Solutions for
Chemical U elcgrapli Paper.
No. 160,405, dated March 2, 1875, for Adjusting Electro
Magnets for Relays.
And the said Thomas A. Edison has made application
for Letters Patont as follows :
(Solutions for Chemical Paper filed Juno 4, 1874, and loa
allowed September 14, 1874.
Improvements in Chemical Telegraphs dated Juno 1,
i 1874, and filed July 26, 1874, being Application Number
] Improvements in Chemical Tolographs dated Juno 1,
1874, and filed July 26, 1874. Application No. 89.
Improvements in Chemical Telegraphs dated Juno 1,
1874, and filed July 25, 1874. Application No. 90.
I Improvements in Automatic Tolographs dated August
f 7, 1874, and filed January 16, 1875. Application No. 92. p29
Improvements in Automatic Telegraphs dated Jan. 18,
1875, and filed Jail. 27, 1876. Application No. 103.
Improvements in Automatic Telegraphs dated August
7, 1874, and filed Jan. 16, 1876. Application No. 98.
Solutions for Chemical Paper dated August 14, 1874,
and filed Jan. 16, 1876, being Application No. 102.
Automatic Telegraph Instrument dated Jan. 18, 1876,
and filed Jan. 26, 1876. Application No. 104.
Recording Points for Telegraphs datod Jan. 18, 1876,
nnd filed Jan. 26, 1875. Application No. 105. ls0
Preparing OhomienI Paper, datod Jan. 18, 1875, nnd
filed Jan. 26, 1875. Application No. 106.
Automntio Telegraphs dated Jan. 19, 1876, and filed
Jan. 27, 1876. Application No. 107.
Automntio Telegraphs dated Jnn. 18, 1875, nnd filed
Jan. 26, 1876. Application No. 108.
Improvements in Telegraphic Apparatus dated Fob. 11,
1875, filed Fob. 16, 1876. Application No. 110.
And whereas tho entiro rights in nnd to the said inven-
U t!°"s,and thu loU,ors ^tent that are or may be granted isl
thorofor, nro now hold by virtue of assignments duly re*
corded in tho United States Patent Ofiico by mo, George
Harrington, of ■Washington, D. O., and tho said Thomas
A. Edison, in tho proportion of two thirds by mo nnd one
third by tho said Edison.
And whereas Jay Gould, of tho City and Stato of Now
f . rk> 13 desirous of acquiring our entiro rights in tho said
" inventions and Letters Patont.
6*
84 d
132 And whorcns tho said Edison has duly appointed mo, I
tlio said Harrington, bis truo and lawful attorney in rela- I
tion to bis inventions and patents. 1
Now this indenture witnessed], that for and in eon. ft
sideration of tlm sum of one dollar to mo paid, the j
receipt of wbicb is hereby acknowledged, I, tho said Georgo
Harrington, for myself individually, and as attorney for the
said Thomas A. Edison, have sold and assigned, and do by '
these presents assign, transfer, sot over ntid convoy unto 1 j
138 tlio snid Jny Gould tho entire right, title and interest of J
every character into, under and connected with tho said in- J
volitions, and tho Letters Patent that have been or may | .
. ..... bo granted therefor, for the use and behoof of tho t
said Jny Gould or his legal representatives, ns fully and 3
entirely ns the same would have been hold by myself or j
tlio said Edison, lmd this assignment and salo not been
made. I
In witness whereof, I, tlio snid George Harrington, liavo
134 hereunto sot my hand and seal this ninth day of April
A. D. 1875. 1 ’
Recorded
Hay 7, 1875.
Witnesses.
0. B. Harrington.
James Horton.
GEO. HARRINGTON, [seal.]
for self and ns tho duly con¬
stituted Altoruoy of Thomas
A. Edison. [seal,]
185
Dcfcudunt’s Exhibit 32b. — May 11, 1877.
In consideration of one dollar to mo paid, tho receipt of
which is hereby acknowledged, I, Thomas A. Edison, do
hereby approve, ratify and confirm tho above transfer from
• George Harrington to Jay Gould, so far as relates to my
rights m the said inventions and Letters Patent.
As witness my hand and seal this fifteenth day of April, 186
1875.
TriOS. A, EDISON, [seal.]
Witness.
E. J. IClLBOUItNE.
C. B. IIahiuxgton.
Dofcndimt’s Exhibit 32c.— May 11, 1877.
[Copy.] 187
New York, April 16, 1875.
Sir :
I hand you herewith a specific assignment of each and
every patent and application for patents, oovoring all of •
T. A. Edison's inventions for automatic telegraphy, and
whereby tlio full and complete title invests.
Tim consideration to bo paid therefor is thirty-one thou¬
sand eight hundred shares of the stock of the Atlantic &
Pacific Telegraph Company.
I will thank you to withhold tho within assignment 138
until tho Atlantic k Pacific Telegraph Company shall de¬
liver to you the snid shares of their stock, when tho assign¬
ment will bo delivered (o thorn.
These slinrcs you plonso hold subject to delivery to tho
following named parties:
John McManus . Reading, Pn . 43 shares.
Soyfert, McManus <fc Co., Pliiln . 4,698 do.
Wm. M. Soyfort . Pliiln . 820 do.
Win. J. Palmer . -...Colorado . 540 do.
John Elliot . Riggs & Co., N.Y.. 200 do. 139
H. C. Dnllett, Jr. . Philo . 6'j do.
E. Corning . Albany . 80 do.
James Dnllett, Trustco. ..Pliiln . 120 do.
Alex. Morton . N. Y., 80 Broadway. 40 do.
J. J. Marsh . Haverhill, Mass. . . 60 do.
Snm’l B. Parsons . Flushing. . 500 do.
J. C. Reift' . Now York . 7,057 do.
A. & P. Telegraph Co . 1,400 do.
«
140 T, A. Edison .
J. 0. Hoifl) Sco'y .
Goo. Harrington .
■ . . 8,000 si litres,
•• 1,428 do.
...12,254 do.
31,800 do.
tnnte“ ”*'*** °f pnl'tics sl,nU bo ywr full acquit- '
Very respectfully, : I
U1 _ „ GEO. HA 11 RING TON. ,
m Jay Gould, Esq. j
T „„ m'v y°«k, April 10, >75.
srrsL' °nr--ay GmM- * i r
ii,r; r"°m -w*
'.mo trouble and services in connect
be required to reimburse * I Uttmngtol>. shall
money tnaybavo been advaLedX^ufe.natien ^
upon tbe basis of four in A. & P steel- to n r pU.rpT*
IS to lbo soveral atnounts'as btl^b nb" “““
THOS. A, EDISON.
Scfcmlnnt’s Exhibit 82(1 _ May ll, 1877. 144
Whereas tho Directors of the Automatio Telegraph Com¬
pany, at a mooting specially convened for the purpose, and
bold on the 8th of April, A. D. 1875, at which more than
three fifths of tho whole Board were present, unanimously
authorized and approved tho sale and transfer to tho At¬
lantic & Pacific Telegraph Company of all tho rights, titles
and interests of tho said Automatio Telegraph Company in
and to tho telegraph lino running from Hew York to
Washington, Hist, of Columbia, including cables and all
other property attaching thereto, obtained or acquired, or 145 ,
to bo obtained or acquired by virtuo of a contract or agree¬
ment between tho National Telegraph Company and tho
Automatic Telegraph Co,, both of which bear date tho 18th
of January, A. D. 1871, and copies thereof aro lierowith.
And whereas the said Board of Directors nt tho said special
meeting unanimously authorized and approved tho sale and
transfer to tho said Atlantic & Pncifio Telegraph Co. of all
tho rights, titles and interest of tho Automatio Telegraph
Co. in and to the Little system of telegraphing, and in and
to tho various patents, doviccs and inventions of said 140
Gcorgo Little, in relation to or in connection with said sys¬
tem, acquired and obtained or to bo acquired or obtained
under and by virtue of certain contracts made and entered
into by and between Daniel H. Craig and Georgo Little of
tho one part, and the National Telegraph Company of tho
other part, bearing date tho ninth day of September, A. D.
1800, and supplements thereto, dated respectively tho 10th
January, 1870, 25th of April, 1870, and 81st of May, 1870,
and tho transfer to and assumption by tho said Automatio
Telegraph Compnny of said contracts and supplements, as 147
shown by a certain contract or agreement between said
National Telegraph Company and Automatio Telegraph
Company, bearing dato tho 18th of January, A. D. 1871,
and found lierowith ; and also by a further contraot embrac¬
ing an exclusive license to use said system under royalty,
bearing dato the 0th May, A. D. 1872, also to be found
herewith ; and whereas more than three fifths in interests
of tho stockholders of tho said Automatio Telegraph Com-
148 pnnynt a mooting hold on tlio 8th April, A D i87n
Sl,Sd0On'nn°d1fOr ?’° pUr,)0S0' >',>«'-i-»°«sl/nppiv5
such, and confirmed such salo and transfer •
rcitiOj.l and confirmed by the stockholder*? ilui 1
a!Sidi,^1Mr,,l'vo c?",mitto°
»rs s'1::', ,to "mbi *"■ ■***
mh p._ Ul, ^ ™-
ntent of the 18th of January, A. D 8 „ =v
lonal Telegraph Company, ^Ind a^ho ^ht title 5
52 7:7 *«■ *» »: “*
SSSSSSM?^
ss t
"«3Ss5SSg^
aJ from'0 nSr00m0,,tS °f 18th J—T, 1871, IteUw,,
■JsJS&asaffisste--
D. IT. Craig, a full and legal assignment from himself
or his assigns, of all interests and claims in and upon the
Little system and other devices for Automatic Telegraphy ;
A Iso from
Marshall Lcllcrts or his assigns, of all his claims upon tho
Little system, and all the patents for drop copies and other
devices for or connected with automatic telegraphy now or
heretofore owned by said Lell'erts. Also irom
Frank Anderson, or Peekskill, of all his patents and ,-3
inventions for or connected with telegraphy. Also from °
F. J. and George Grace, of all their joint and several
claims and devices for fast telegraphy.
In witness whoroof, etc., this tenth dny of April
1875. ’
(Signed,)
GEORGE EARRING ION,
President Automatic Tel Co.
Witness : J. C. Reiff, Sec'y.
Defendant’s Exhibit 32c _ May 11, 1877.
Automatic Tel. Co.’s Rooms, i
s.r_ N. Y., April W, '75. f
I hand you herewith deed of Transfer to tho Atlantic
and Pacific Telegraph Company of all tho rights, titlo and
interest of this company in and to tho lino of telegraph
reaching from Now York to Washington, D. C., and of all
tho rights, titlo and interest of this company in and to tho
patents and devices of Geo. Little, comprising tho Littlo
system of telegraphy.
The consideration to bo paid for a full and complete titlo
to said lino and system, as set forth, is eight thousand two
hundred shares of tho stock of the Atlantic and Pacific
Telegraph Company.
To the National Telegraph
To George Little (loom jllvo ^,m,ma(i Shuras.
a’° VwGnis !or >‘‘^q h0"mnl t,a
t r,1'S for -mi™, , I
w (W)T„,W-<»,
•L 1'. & Geo. Grace. J _ Lluiitlroil Shares.
8,200
168
sx-sr,r . .
Besp’y,
GEO. HAHRINGl’ON,
President Automatic Tel. Co.
Defendants’ Exhibit SS.-May io, 1877.
Mr. Orton : July 24, 1874.
not promptly ^rltr^orMrJ001’ nn‘? ,* tlli,,k if Tou
arrange to givo y„„ £jf " a „ T™ .Wilh l,im h° ««„
only confirm your position 1,..t to,,ml,c> which will not
the Presidency, and give von t\ SCC!,rc •Jour Election to
Emo^fo1 tiLTr'sf1 si Jium; 'vnnts i° «o to
tnom within forty-eighl h^ STfUr0 “tio and -nice paj.
°U y 1 WiJ1 ™ke —Jsolf known to yo°u inS^,;1"'3
Defendant’s Exhibit 33n.— May 10, 1877. 1(10
J. G. IIkiff, Agent.
Omen Kansas Pacific Hah, way Company 1
No. SO H roadway, ’ (.
Nmv York, July 2 4</i, 1874, )
j Pear Sir: Yours with enclosures just received. Our
anonymous friend certainly seems to bo very zealous, re¬
gardless of authority or discretion assuming tho role of
Maverick in tho Bocohcr-Tilton case. I told you in our
last interview that I and my friends' had not looked in that 101
direction for a market, and that thcro were elements muuli
opposed to it.
But it is fair to presume that ns you aet on snob a com.
munication, and inclose it to mo for evidence, you really
ivish to meet mo again upon tho subject.
I will consent, under tho circumstances, but it may not ho
at your own office.
Hcsp'y yours,
JOSlArt O. JtKIli'K. 11)2
Exhibit 33b.— II. C. V.
K OlTICU 1
. ’/«V Tip 874.)
J. C. IIeifk, Esq.
Pear Sir: I have just received the enclosed by mail,
and can only say that I shall be pleased to see you this lfl«
afternoon, if you so desire.
Very respectfully,
(Signed), WIMJAM OH'I'ON,
42
104 Exhibit 33c. — H. C r TiY,, n .
J.O.B EmwVll, C. C. lor Identification.
Oitick Kansas Pacino JU,urn- 0mr„.
Ho. 80 Broadway, C MUSV'|
I apologue JZJ°UK' AUUWt U’ 1S7'J- *
wl"cli I imvo l,oon careful to make !,o '.'"""V'0 e"t,Io5c(I
only provoke usoloi ,0 0 110 »*= of, as it would
105 ■ Yours truly, 1 cr
To J- C. FFJFF.
Hon. W.m. Oiito.v. I
Bcfcii(iniit»s Exhibit 33,1,-jfay 11, 187,
50 nroculw,„j. JUM"2a
100 ing ‘i'^ri-irnldVaro'nlytiirf"1^"3 1 wns sUM’
800 nbo»t it to-day. y l,mo 10 wply Hint I would
^ J I-
Sz rr nor 10 ^°° iL !z°no iir tu‘>h"
*7- - •Sissi i
tbo to come." Wt 1 "M" you to <• flco from
Yory respectfully, ’
WILXIAM OllTON.
Defendant’s Exhibit 34 _ May is, 1877.
New Your, FA. 1M, 1874.
108
If the arrangement in regard to tl.o Automatic System of
1 elegraphy contemplated by you, and made the subject
matter of my communication of this date, shall bo carried
T r r y°U ,1° “ rn|,l0t° transnctio". I I'oroby agree, on be¬
half ol myself and associates, to pay to you the sum of one
hundred thousand dollars ($100,000) for your services out
of the cash sum received, as stipulated for, and that said
amount, as above, shall be entered and charged as a part of 169
the sum actually expended m developing and launching our
enterprise it being understood and agreed that there shall
bo no claim whatsoever unless your plans shall sueeoed, tl.o
evidence of which shall bo the payment of the cost monoy
(or .ts satisfactory equivalent) of the enterprise, and the duo
Assignment of the proportions agreed upon, or such other
an a iac oi t ns shall bo satisfactory to us.
,,, „ „ GEO. HAHHINGTOiY.
Wit. H. Davidou, Esq.
Approved — W.\r. II. Davidgb. 170
Dcfemhint’s Exhibit 34u.— May IS, 1S77.
Fear Sir: Ne"" YoiiK- m'U ’74.
In rosponso to the viows advanced by you to-dav, I am
frank to say that my interest is purely a question of “monoy,
and if you think you can present to us tho moans of more
promptly realizing than those wo now command I am ■
ready to respond.
Our plan, as long since determined upon, wns to bring in
associates who should join us in launching wlmt Im3 boon
brought to a stato of readiness by a largo outlay of monoy.
Wo have so far perfected our plan ns to liavo scoured a
combination and a market at a satisfactory price. You con¬
template practically the same, but with dillbront parties and
dillercnt means, and with moro immediate returns.
, you hiiouIU secure to us om-
to exceed cue million dollars I ,vjll , 0,,,,W »°t ,
>i. »4o«i.«o,! ■ »"i «i,„ “
GKO. HAIUUNGTOX.
173 Defendant’.-! Inhibit 3,,.-Mny n, 1877.
OffiOUIT COUNT OF THE UNITED STATES
P0K T1IE «0UTJ,'!1,3f mSTJUCT OF JfjiW y011Kt
“ ^^SM.'MrAT^r - -
^isrsa
tins their bill against The Ul °l New J°raey, bring
Pnl pineo 3 ££,° 3 £ ^^3-
State of New York, and S, °'v "' YoJ'k- «*' ‘ho said
175 % Gould, of „10 s’aid CyJ^'Tf l'M Sl^
“to said State orWow York Wk- 11 olttaon of
' "tT1” -I*..
ooverer of various svsten ' ?1!1'1 hivontor or dis-
•-ans, contrivances id d°' 'CCS* ““1-atu,
electric telegraphy, aud the business of d !UKl rolali"« ,0
3 01 tlie transmission of
messages by electric telegraph, and the recording and copy- 176
ing of the same, and in and relating to chemically prepared
paper and •perforators for use in what is called automatic or
fast telegraphy, and otherwise for use in the telegraph lmsi-
ness, and especially in regard to chemical automatic tele¬
graphy and duplex nml qundruplox telegraphy.
Which said inventions wore not, nor was any or either
of them known or used by others before the inventions or
discovery thereof by the said T. A. Edison.
2. That thosaid Edison duly assigned to tho said Hat- i77
ringtail two third parts of oach of the said inventions.
And your orators applied for and obtained letters patent of
tho United States for each of tho said inventions, and tho
said letters patent were granted to and issued to your ora¬
tors jointly, whereby your orators became and were (subject
to tho rights and interests of certain other parties as here¬
inafter mentioned) tho solo legal owners of tho said inven¬
tions and patents for tho same, ns by reference to tho said
letters patent or certified copies thereof, here in court to bo
produced, will more fully and tit large appear. 178
. And which said patents bear date and are numbered ns
follows:
No. 121,601, dated Deo. 5, 1871, for an Apparatus for
Perforating Paper for Telegraphic Purposes.
No. 128,08-1, dated February 27, 1872, for 'Telegraph
Apparatus.
No. 121,800, dated March 22, 1872, for a Telegraphic
.Jfecordmg Instrument.
No. 183,811, dated Dee. 10. 1872, for a Typo Wrilin-
Machine.
No. 182,150, dated October 22, 1872, for Apparatus for 17°
lorforntmg Paper for Telegraph io Use.
No. 182,155, dated October 22, 1872, for Paper for
Olicmicnl Telegraph &
No. 188,019, dated November 12, 1872, for tin Klee-
trical Printing Machine.
No. 181,867, dated January 11, 1878, for Improve¬
ment in Chemical Telegraphs.
180 (,at0d Jammy U> WS‘ for K,ecl~ Jfag.
CiiS,^1'772' d,UOd A"SUSt 12' 1373, for Telegraphic
CiS,735'531' February 4, 1873, for Telegraphic
CiSitf’778' dnt°d Ausust i2> 1873, for Telegraphic
No. 150,848, dated Alav io 1071 r
Circuits. y U' for Telegraphic
181 No. 141,778, dated Aucust 1° 1070 r „■
Chemical Telegraphs. S X878' fi)r Clrouil» for
1\0, 1 ‘11,775 dated August 12 is7q a,,. \
Perforating Paper. ’ 78’ fo1 Al>Pnrntus for
No. 141,774, dated August 12 137,1 r,„. t
in Chemical Telegraphs. WJ| fo‘ Improvement
7, 0. 141,i77, dated August 12 1370 r
Instruments. 1® *8, for Telegraph
No. 150,847, dated May 12 187 1 a,,. . .
moms for Chemical Telegraphs ’ Booo,vinB
182 pNr°' 1‘11|812, dated Foby. 10 187a fo .
Perforating Paper. J for Apparatus for
Chemical Tcl^ruphtf l°bjr’ 10’ 1874, for Circuits for
Chemical Telegraphs. F°by' 10’ 18"4' for Improvcmont in
monts in Chomicnl Tolegraphs!7 ^ 1SU’ r°r lmPr°'’c-
graphs151,20!),d,,tOd “V 28, ‘ 1874, for Auto.natie Tele-
183 ChomioaPTolograplis11 17' 18H for Duplex
Cl^XSpa^0'1.2’1875-^ Solutions for
Chemical Tolcgnfpl1,0^^^011 2’ 187C' r°r Solutions for
ClmmiealJeSrad;i1p„;;rh 2' 1875> Solutions for
Electro Mt^nefs for iil^ll,0l‘ 2’ 1876> r°r Adjusting
1 47 .
No. 102,633, dated April 27, 1875, for Improvement in 184
Duplex 'Telegraph Apparatus.
No. 160,580, dated March 9, 1875, for Solutions for
Chemical Telegraph Paper.
No. 160, S50, dated August 17, 1875, for Improvement
in Chemical Telegraphy.
No. 106,860, dated August 17, 1875, for Improvement
in Chemical Telegraphy.
No. 100,861, dated August 17, 1875, for Improvement
in Chemical Telegraphy.
No. 1 OS, 242, dated September 28, 1875, for Improve- 185
incut in Transmitters and Deceivers for Automatic Tele¬
graphs.
No. 168,248, dated September 28, 1875, for Improve¬
ments in Automatic Telegraphs.
No. 108,405, dated September, 28, 1875, for Solutions
for Chemical Telegraph Paper.
No, 108,400, dated October 5, 1875, for Solutions, for
Chemical Telegraph Paper.
No. 108,407, dated October 5, 1875, for Improvement
in recording points for Chemical Telegraphs. 180
No. 171,273, dated December 21, 1876, for Improve¬
ment in Telegraph Apparatus.
8. And your orators further show, that tho said defend¬
ants herein, Tho Atlantic and Pacific Telegraph Company,
ire using tho said patented inventions and improvements in
their telegraph offices, in tho snid City of Now York, nnd
in various other places in tho United States, to tho groat
dninngo of your orators, and to tho groat gain nnd advan¬
tage of tho said company. 187
And your orators linvo renson to believe that tho snid
company will continue to use the snmo in violation and in¬
fringement of tho rights of your orators, without the con¬
sent or authority of your orators, or oither of them.
3«. And tho snid defendants, Tho Atlantio and Pacifio
Telegraph Company, pretend and claim that they lmvo tho
right to use tho said patented inventions or somo of them
under nnd by virtuo of tho following deeds, viz :
49
188 1. A deed bearing (Into 1 January, 1875, pnrnorlinrr to
be a transfer from the said Geo. Harrington, in bin own
right and as attorney for said Thomas A. Kdison, to Jay
Gould. J
2. A deed bearing date 4 January, 1875, purporting to
be a power of attorney from the said T. A. Kdhon to the
said Jay Gould.
8. A deed bearing date 0 January, 1870 purporting to
180 Jr. Mill" l,'° S!lU1 E'liS0" hyStM 001,111
4. A deed bearing dale 11 January, 187 , ,r, ort g to
boa transfer by the said Mills to the Atlantic and Pacific
lolcgraph Company.
G. A deed bearing date 9 Jraroh, 1875, p.irporting to be
a transfer by the said Harrington to the said Gould.2
ion' „ ft V?1 ^Cnrin?i!at0 0 1875, purporting to bo
190 a transfer by tho satd Harrington to tl.o said Gould. b
a Lm b,0nrh,’S tlnt° 15 Al,riI- 187C- Purporting to bo
hansS * Si,U1 EdiSOI‘ °f th0 ^ "lentioned
applications tor patents in duplex and cjuadr plex telega
phy, and filed for record 11 April, 1870. “
’s®£ia?«3
omnstanees; and in tho manner hereinafter Znltd.Tf
which tho said defendants, The Atlantic and Pacific Tele¬
graph Company, had full legal and constructive notice be¬
fore they endeavored to acquire any right, title or interest
under the samo or cither of them.
And that the defendants respectively had notice, as
hereinafter mentioned, of tho trusts and ccpiitics hereinafter
specified or referred to, and well knew that tho said Har- 102
ringlon did not in and by tlio said deeds, any or either of
them, intend to defent, destroy or impair such rights, titles,
trusts and equities, or any part thereof, but on tho contrary
intended, ns tho defendants respectively at all times well
know, to not in all respects in accordance therewith and for
tho benefit of tho parties beneficially Interested with your
orators in tho said inventions and improvements and tho
fruits and proceeds thereof.
8b. By a certain indonturo bearing (Into tho 1st day of
October, 1870, Thomas A. Edison and tho said Gcorgo Har- 193
ringlon became copartners and joint owners for n period of
fivo yenrs, of all inventions made or to bo made by tho said
T. A. Edison during that period, in tho following propor¬
tions, viz: '4 ho snid T. A. Edison 0110 third, and tho said
George Harrington two thirds of tho said inventions.
8c. By a eorlnin deed bearing (Into 4th April, 1871, it
is recited that tho said Edison had stipulated and agreed with
tho said Harrington that I10, tho said Edison, would invent
nnd construct instruments and machinery that should suc¬
cessfully develop into practical uso a system of automatic
or fast telegraphy, and that tho pntonts thorofor should bo
issued to said Harrington nnd Edison in tho proportionate
interest of two thirds to snid Harrington nnd ono third to
snid Edison, tho whole to bo under tho solo control of tho
snid Harrington, to be disposed of by him for tho mutual
benefit of tho snid Harrington nnd Edison in the proportions
aforesaid. I11 pursuance of tho said agreement, thesaid T. A.
Edison did, by tho snid deed, assign to tiro snid George Har¬
rington two third parts of tho patents nnd inventions thoroin
mentioned, and gave to tho snid Gcorgo Harrington power
to dispose of the remaining ono third, which said power was
7*
\
so given to the said Harrington in order to prevent any
separation of the interests under llio said patents and in¬
ventions, and so Hint tbo samo should bo disposed of for
the benetit of tbo said Harrington and Edison, and other
parties interested therein, ns herein mentioned; and so that
no one bnving any interest in the said patents should he
able, acting separately, to use or grant any license or au¬
thority to use the said inventions, or any of them, or any
part thereof, to the prejudice and dnmngc of the other par-
105 ties interested therein, or in the fruits and prceeeds thereof,
And accordingly it is in and by the said deed declared
tlint the said 1'. A, Edison was desirous of obtaining tho co¬
operation and assistance of the said Gcorgo Harrington in
disposing of his, tho said T. A. Edison’s, one third interest
as beforo recited in tho said instrument, and for tho purpose
of united and harmonious notion innegotinting for its use
or snlo and transfer by or to others, in conjunction with
his, tho said Gcorgo Harrington’s own. And tlint there¬
fore the said T, A. Edison did, by tho said instrument coit¬
ion Sti.‘!l!° Tl nl)I,0,’nt l'10 s"'d George Harrington his, the
100 said 1. A. Edison's, true and lawful and only attorney irre-
,y,oc"b*u’!osdI ,nlltl transfer and convoy all of tho said
I. A. Edison’s rights, titles and interests in and to any and
all of his said inventions, and that tho said T. A. Edison
thereby divested himself of, and invested tho said George
Ha rung ton with all tho powers necessary in tho premises,
fully and completely to carry out the purposes and inten¬
tions therein set forth.
The said deed was recorded in the Patent office, Hay 0,
iYol) " C°Py tbCrCOf 'S ll0roto nPP°»d«l, being Exhibit
107 Tn4; iTnC ^G“re° Hnrri,’Slon associated with himself
Jos ah CHcifi, Soy fort, McManus & Company, William J.
Rdmcr, Henry 0. Dallett, Junior, and others as herein-
after mentioned, for the purpose of developing tho said in-
ve m o ,s 0f tho said T. A. Edison. And it was agreed by
a d between them and the said Harrington and Edison,
that they, the said Harrington and Edison, and the said
eift and others, as aforesaid, should ho and they became
ontitlod to certain shares of tho fruits and proceeds of such 198
inventions, and of tho patonts therefor, in proportion to
their contributions of the funds expended for tho purposes
aforesaid, but that tho title to and powor to dispose of tho
said patents should ho held by tho said Harrington in trust
as aforesaid, in order to prevent any division or separation
or tho title thereto, to the detriment of tho parties interested
ns aforesaid.
5. Tho said invontions made by tho said T. A. Edison in
electric telegraphy, including apparatus for perforating 199
paper, and tho preparation of paper for chemical telo-
grnphy.'nnd machinery for typo-writing, &o., woro mado by
tho said T. A. Edison under and in pursuance ot tho said
arrangement with him, and aro included in tho said deed of
tho 4th April, 1871, and tho said patonts liavo been issued
to the said George Harrington and T. A. Edison jointly.
And in pursuance of tho provisions of tho said deed of 4th
April, 1871, the formal written applications of the said Edi-
son to tho Patent offico for said patonts woro accompanied
in each ease by a speeifio assignment of the invontions re- 200
ferrod to in such applications unto tho said Edison and Har¬
rington in tho proportions aforesaid.
And it was declared that tho profits resulting from tho
said invontions wore to be divided in proportion to tho in¬
terest held in said letters patont by tho said parties.
And tho said assignments woro subjeot to tho rights of
tho said Harrington, under tlio said power of attornoy
granted to him by tho said Edison, ns to tho disposal of
his, tho said Edison’s ono third interest. And tho said T. 201
A. Edison has mado, and intends to maho further and
other inventions in electric telegraphy, and has mado
application for other patonts for invontions made by him at
aforesaid, which have not yet boon grnntod.
0. Tho title in and to tho said patonts and inventions has
been, and is now in tho said Gcorgo Harrington and T. A.
Edison, in tho proportion of two thirds in tho said Gcorgo
Harrington, and tho remaining ouo third in tho said T. A.
"02 M'son. And tlio said Gcorgo Harrington hold the titlo to
and power to dispose of the said patonts and inventions so
as to preserve tlio unity of tlio titlo as aforesaid. '
And it was originally understood and agreed that the said
patents and inventions should bo held by tlio said Gcorgo
Harrington m trust, to be disposed of for the benefit of his
said associates, m conjunction with himself; in certain shares
and proportions, such trust being deemed necessary by' the
aid Harrington, Edison, Itciff, and their associates, to avoid
203 nonel'rV liUUUiC3' l0SS' dftlna='° inji'O’ consequent
upon the legal oxoreiso of the power of disposition held by
any ono of several parties jointly holding the titlo to a
patont for an invention.
ti.nfS» T? by T? b°tWoon th0 P«rtl« aforesaid
rnncf d P ?"t3 nnd lllvontioils should bo sold and
Iratten f “ t0 C3raph 00,nPnlly or companies, in consul-
oration of money, or stock, or royalties, to be distributed
204 lTeilfTnl Tl ^ H,,rrin='t0l|l T. A. Edison, J. 0.
204 and °.th?rsi lll0,r associates as nlbrosaid, according to
their several shares, rights, and interests therein. b
and inventions have always been
and still are hold by the said Geoigo Hainngto.i in trust ns
i trusted fiom Inno to tune by his said associates with thn
mmseit and the said Harrington, on tlio f-dtl.
trust mid the duo performance thereof. And the said llcilX
sail "t nr°iatC3 b,lV° SUppliud funds to pay for ^tho
rji, A. Edison, were, as and when they woro so issued, 200
deposited in the offico of tho said Harrington and Hoi if
and their said associates, as tho propor depository for
tho same; and tho said dcods of 1st Oct., 1870, and 4th
April, 1871, and all othor deeds and documents relating to
tho said patent rights and inventions woro also deposited
in liko manner for tho bonefit of tho parties interested
therein, ns aforesaid. And all the said patents, deeds and
documents now remain in tho said oflico, togethor with tho
account books, accounts and vouchers of and relating to tho
said trust. 207
7. By a certain memorandum of agreement bearing date
Wth December, 1874, under tho hands of Jay Gould, tho said
J. 0. Heilf and John McManus, it was declared that it was
thereby understood that they should heartily cooperate in
concluding an allianoo between tho Atlantic and Pacific
'Holograph Company aud the Automntio System on tho basis
therein montioned. And it was therein inontionod that tho
prieo to bo paid for tho patents for the Automntio System,
contracts, otc., should bo 40,000 shares of tho stock of tho 208
said company. And it was provided that tho said lleill and
McManus, and their associates, should participate in tho
management of tho affairs of tho said company, as therein
montioned.
A copy of which said memorandum is appended hereto,
being Exhibit iVb. 2.
Tho said memorandum was, with tho propositions therein
contained, approved aud confirmed by tho said Gcorgo ^
Harrington.
8. It was understood and ngreod, by nnd betweon tho
- said Heiff and McManus nnd Gould, that tho said proposed
sale to tho Atlantic and Pacific Tolegraph Company for tho
said 40,000 shares of stock should embrace certain patents
which had been granted to the said T. A Edison, and cer¬
tain inventions of tho said T. A. Edison, described in cor-
tain specifications which had boon filed by him in tho
• Patent Office, and oortain patents and inventions of Georgo
64
210 Little, in or relating to cliomicnl nutomntio telegraphy, and
also a certain tologrnpli lino from Now York to Washing,
ton, with its oilieos ami appurtenances.
Iho said tho Automatic Telegraph Company hold tho
said lines of (olograph under a certain contract for the pur-
chnsc thereof by them from tho National Telegraph Com.
pany, and also held tho right to use the said patented in¬
ventions of tho said George Little, under contract with tho
last named company for tho purohaso thereof.
And tho Automatic Tologrnpli Company also held a
211 verbal revocable license from tho said Goorgo Harrington
with tho assent of his said associates, to uso tho said inven¬
tions of tho said T. A. Edison upon tho said tologrnpli lino.
Shortly after tho said agroament of 80th December,
1874, was entered into ns aforesaid, it was arranged by and
between tho said George Harrington and his said associates
and tho said Jny Gould, that tho said 40,000 shares to be
paid for tho several properties aforesaid, should bo divided
and apportioned ns follows, viz : that 81,800 of tho said
212 shares should bo paid for the said patents and inventions
of tho said T. A. Edison, and 8,200 of tho said slinros for
tho rights, titles and interests ns aforesaid of tho Automatic
Tologrnpli Company and of tho Nntionnl Tologrnpli Com¬
pany, and of tho said Georgo Littlo and his assigns.
. 11 w“s arranged by and between tho said Goorgo Ear-
rington and his associates and the Automatic Tolo»raph
Company and the said Jay Gould, that tho Atlantic and
Pacific Telegraph Company should liavo tho option to pur¬
chase tho said property on tho terms aforesaid, and should
218 bo lot into possession of tho said telegraph lino and olliocs
and have temporarily tho right to uso tho said inventions
upon their telegraph lines, until tho completion of tho said
0. Tho said Georgo Harrington being in ill health and
about to leave tho United States, it was deemed prudent
and advisable to obtain from him a transfer of the said
patents and inventions of the said T. A. Edison, ready to
tako oll'oot upon the completion of tho said proposed or
65.
intended purohaso by the Atlantic and Pacific Telegraph 214
Company; and also a transfer from the Automatic loo.
graph Company of its right and title as aforesaid, unto the
Atlantic and Pacific Telegraph Company, to bo delivered
upon the payment by them of the said 81,800 snares, and
8,200 shares of stock, which they could not under their by-
laws issue without n compliance with certain provisions
therein which involved considerable delay.
And accordingly, on or about tho 0th day of April,
1876, the said Georgo Harrington, in tho belief and ox- 21u
,, eolation that tho said proposed bargain, made on the SOtli
day of December, 1874, would bo fulfilled by tho said iho
Atlantio and Pacific Telegraph Company, did individually
and as nttornoy for tho said T. A. Edison, execute a certain
deed bearing date 0th April, 1876, purporting to bo an
assignment to tho said Jny Gould of the patents and inven¬
tions of tho said T. A. Edison therein referred to, for tli0
nominal consideration of one dollar.
A copy of which said last mentioned deed to appended
hereto, being Exhibit A 'o. 8. . . 216
And tho said deed was by an instrument in writing under
the hand and seal of tho said T. A. Edison, bearing Into
16th April, 1876, approved, ratified and confirmed by the
said T. A. Edison. .
A copy of the last moutioned deed is hereto npponded,
being Exhibit A ro. 4.
10. Tho said Goorgo Harrington, on tho 10th day of
April, 1876, handed tho said deed of 0th April, 1876, to
the said Jay Gould, ns a trustee or agent for tho Atlantio 217
and Pacifio Telegraph Company, with a letter from tho said
George Harrington addressed to tho said Jay Gould, and
' signed by tho said Goorgo Harrington, requesting him to
withhold the said assignment until Tho Atlantic and Pacific
Telegraph Company should dulivor to him, the said Jay
Gould, 81,800 shares of tho stock of tho said company,
and then to deliver the said assignment to thorn.. And in
and by tho said letter tho said Jay Gould was directed to
’ hold tho said 81,800 shares of tho stock, to bo delivered to
1
66
218 tlio said Georgo Harrington, T. A. Edison, J. 0. Roift' nnd
others tmmed therein, in the shnres nnd proportions therein
mentioned, thnt is to say :
Shares,
Jolm McManus . 48
Soyfcrt, McManus & Co . 4,393
Win. M. Soyfert . '320
Win. J. Palmer . 040
John Elliott . 200
Henry C. Dallett, Junior . 60
219 Erustus Corning . gO
Carryforward . 5,944
Brought forward . 5,941
James Dallett, Trustee . 120
Alex. Morhn . 45
J. J. Harsh . gg
Samuel B. Parsons . 5qq
JosiahC. BeilF . 7 067
220 The Atlantic nnd Pacific Telegraph Co. . . . l’lOO
Thomas A. Edison . 3 qqq
Josiah C. Beifi’, Secretary . 1,'128
Goorgo Harrington . 12,204
The Baid Jay Gould did not pay, or promise or agree
to pay to the said Georgo Harrington any consideration
whatever for the said assignment to the said Jay Gould of
221 the said patent rights, held by tho said Georgo Harrington
in trust as aforesaid. Nor did tho said Jay Gould pay, or
promise or agree to pay to tho said Thomas A. Edison
any consideration whatever for his said ratification thereof.
Nor did tho said Jay Gould promiso or agree that tho At¬
lantic and Pacific Telegraph Company should pay any
consideration therefor. Nor did tho Atlantic nnd Pacific
holograph Company promise or agree to purclinso the patent
rights nnd inventions embraced in tho said deed of 0th
April, 1876, for any price or consideration. But it wnsnn- 222
trZcd and agreed, by and between tho said Goorgo Har¬
rington and ids associates and tho said Jay Gould, that the
Atlantic and Pacific Telegraph Company should have the
rf-dit to purchase tho same upon payment ot the constdera-
lion specified in tho said loiter of 16th April, 187o.
A copy of tho said letter of 16tU April, 187t), is npponded
hereto, being Exhibit No. 6.
XI Tito said George Harrington, on the 10th day of
April 1S7 111 Hothcsaid Jiyto 11 1 eerto deed 2-8
bearing date 10th April, 1876 purporting £ b° *
by the Automatic Telegraph Company to l ‘C Athmtic and
Pacific Telegraph Company, of all the title of the ‘
Telegraph Company to the patents granted by the United
States to George Little, and also to certain other prope.ty
in consideration of 8,200 shares of the full paid-up stock o
the Atlantic and Pacific Telegraph Company, winch stock
was to be paid or delivered on receipt from the National
Telegraph Company of the full title of the said telegraph
line from New York to Washington, and on rece.pt from 224
said Little of a full and specific legal assignment of In
said patents, and also on receipt of certain other transf s
of certain patent rights, interests and claims therein inon-
^Tcopy of which said deed of 10th April, 1875, is hereto
^ *WaS “on Ihe'Sid '10th tty ol April, 1875, the said George
Harrington handed tho said last mentioned deed to the
said Jay Gould, as the agent of the Atlantic and laci c
Telegraph Company, with a letter from the said George 225
Harrington, addressed to tho said Jay Gould, and signed
bv the suul George Harrington, instructing the said Jay
Gould that the consideration to bo paid on tho dulivory oi
the said deed to the Atlantic and Pacific Telegraph Com¬
pany was 8,200 shares or the stock of the last named com¬
pany, which was to bo distributed amongst certain parties
named in tho said letter of instructions ill the shares an
proportions therein named. ^
58
226 A copy of wliicli said letter is hereto appended, being
Exhibit No. 7.
12. When the said Jay Gould entered into tho said con¬
tract, dated December 30, 1874, lie was fully aware of the
rights of the said J. C. licit!' and John McManus and their
associates, having had direct notice thereof from the said J.
0. lieitr and John McManus, and from the said George
Harrington amt otherwise, and tho said George Harring¬
ton, on or about the 12th day of January, 1870, wrote a
<,27 letter to the said Jay Gould, refurring to the said contract
of 30th December, 187-1, nnd expressing his, tho said
Goorgo Harrington’s, approval thereof
And the said two letters of instruction, dated 16th
April, 1875, written by the said Goorgo Harrington to the
said Jay Gould, nnd delivered to him ns aforesaid, with the
said deeds, dated 10th April, 1875, and 0th April, 1875,
j wore drawn up with the consent and approbation of tho
I said Jay Gould, nnd wero received by him, with tho said
deeds, upon his promise nnd undertaking to nbido by nnd
228 follow the terms, stipulations, conditions nnd directions
therein contained.
18. Tho Atlantic nnd Pacific Telegraph Company had,
prior to their taking any notion in regard to tho said pat¬
ents nnd inventions, nnd the said telegraph lino from Non-
York to Washington, nnd the business thereof, lull and
direct, ns well ns constructive notice of tho facts and cir¬
cumstances aforesaid, in relation to tho rights of the parties
from whom tho plaintiffs derive title, ns heroin mentioned.
229 14. It was assumed by tho said Harrington nnd his
associates, nnd by tho said Jay Gould, that the terms
of the bargain specified in tho said agreement, dated
30th December, 1874, would be approved by tho Allan lie
nnd Pacific Telegraph Company, and that they would
elect to make the said purchase. And in pursuance of
tho arrangement aforesaid, tho said Atlantic and Pacific
Telegraph Company in tho month of February, 1875,
and on or about February 1st, 1876, wero authorized
_ ■, „t of the Automatic Telegraph Com- 230
by the President or roceivo, nnd accordingly
pany, the said G. Harnngt , t iin0 running
“i; iJU r. -sp;
and after receiving such 1 P°“tSS aid om0es, machines and 231
work the said ^antio and Pacific Telegraph
apparatus. Ami tho sa M aforesaid, upon the
Company received tho said pr 1 f tj] llmt the said
written stipulations signod y ° ld)i00t to tho ordor
oompn iy ll,?"'d',0'f J0° Automatic Telegraph Company;
of the President of tl o Autom ^ boWroon tho Allan-
it being understood mid n^ “ > y d tho ln3t uaiiicd
tie and Pacific 'lologmpU Compnnj ^ ^ o(rioc3
President, that tho = 'bines and apparatus
therein, and tho said ,.l’ dt0 the Automatic Telegraph .232
therein, should be «do ,Uv ed to ^ ^ ^
Company m oaso it al ' 1 ( f tho said property
i— *•—
by the Automatic Telegraph Company.
»W«g *" “a ” tlio ..id «■»
apparatus, as aforesaid, proceeded to ^ ^ 233
and on other telegraph lines, t e system^ ^
16. And the said Jay Gould, ««ting o« * 0
that the said bargain would bo approvo ^ ^
by the Atlantic and laoifio lelc0 P
284 on the seventh tiny of Hay, 1876, prematurely nncl wrong,
fully causo to bo recorded in tho Pntont Onico nt 'Washing¬
ton tho said deeds, dated Oth April, 1876, and 15lh April,
1876, purporting to bo transfers of tho said patents to the
snid Gould.
And tho Atlantic and Pacific Telegraph Company, in
pursuance of the bargain and arrangement aforesaid, caused
or procured additional machines and apparatus, patented as
aforesaid by tiie said T. A. Edison, to be made for use on the
lines of the Atlantic and Pacific Telegraph Company, and
236 worked the same on tho said lines, and they still continuo to
do so, notwithstanding the snid notice to discontinue the use
thereof; which snid machines and apparatus were so made,
and nt first used ns last aforesaid, by virtue of the verbal
consent and authority of the snid George Harrington, with
the assent of his snid associates, ns aforesaid; and it was
j understood and agreed, by and between tho Atlantic and
j Pacific Telegraph Company and the snid George Harring¬
ton, that tiie right to continue the use thereof should cease
in case tiie snid proposed sale to the snid company should
236 not bo carried into effect.
16. And the Atlantic and Pacific Telegraph Company,
in anticipation of tiie fulfilment of tiie snid contract, did
< at vnr'ous times between January sixteenth and February
sixth, 1876, loan to tiie Automatic Telegraph Company
various sums of money, amounting in the whole to the
sum of twenty-three thousand one hundred dollars. And
It was agreed by and between the said George Harrington,
acting for himself and his said associates on tiie one hand,
and the said Jay Gould, acting on behalf of tho Atlantic
287 mid Pacific Telegraph Company, that such loan of any
money not exceeding in all the sum of $36,000 should bo
satisfied and repaid by tho transfer to' tiie Atlantic and
Pacific Telegraph Company of part of tiie snid 31,800
shares, at the rate of $25 per share, as appears by tiie said
schedule m the said letter of instructions of lOili April,
1875, in relation to the disposition of the said 81,800 shares
of stock of tiie Atlantic and Pacific Telegraph Company.
17. The Atlantic and Pacific Telegraph Company have
9th April, 1875, and d ■ GouW ; but tho said
livered therewith to tl bnvo, from time to
company, by its o . d pretexts for delaying and
time, set up various re. pending that they
postponing such set ' -g^ert, the President of the
would settle ns Eoon ; from ids sickness and bo
said company, should recot ^ ^ ot,lcr linics pretend- 239
able to attend to ' Mr Hnrrington and lus ns-
ing that they "c,c ' ° of th0 contract ; but at last,
! sociates to perforin tnu 1 further purposes,
I and when these pretexts Company, by
i the said Atlantic an , Pofl-lcers 0f tiie said company, do-
their President and o would not complete the said
declared that the, ^ and that there cannot
upon because there onnn«cmont contained m a
now be a fulfilment of «•« ' t datcd 30tb Do-
Clause of the memorandum o ( Bciff and Me-
(lti" cSS
the Automatic Telegraph party), Baill.0ad Com-
'f ''eg0lU;l;rPe!;"vlvaIda Kailroad Company, and the M-
&nnd O iio'B»il.ond Company, and transfer! eon
t\ “,o tho Atlantic and Pacific Telegraph Company. 24
awn: »
l aforesaid, ^until shortly before
iSStrisms-ws
242 Company, at the special instance of their president, it being
assumed that they would become the purchasers of the
said patents and inventions and other property ns aforesaid,
and therefore would have the power to settlo the terms and
forms of those contracts. And accordingly, when tho said
deeds were handed to the said Jay Gould, as aforesaid, it
was understood and agreed, by and between him and the
said Harrington, that the said deeds of 9th April, 1875,
15th April, 1875, and 10th April, 1875, and the transfers
called for by the last mentioned deed, wore to ho delivered
243 to the Atlantio and Pacific Telegraph Company, on the
payment of tho considerations expressed in lire written
instruments accompanying the said deeds. And there
were no additional conditions or qualifications whatsoever.
18. lly tho said deed hearing dato 10th April, 1876,
delivered to tho snid Jay Gould in escrow in fnvorof tho
Atlantio and Pacific Telegraph Company ns aforesaid, it
was provided that, in consideration of 8,200 shares of tho
stock of tho said company, tho title of tho snid George
little in and to tho patents granted to him by the United
States for his inventions in chemical automatic telegraphy
should be assigned to tho snid company.
And tho snid bargain made on 80th December, 1874,
for tho sale and transfer of tho inventions of automatic
telegraphy to tho said company, included tho said Little’s
pntonts.
Anil tho said deed of 0th April, 1875, embracing
tho snid patents granted to tho snid Edison for inventions in
automatic telegraphy, together with the snid deed of 10th
245 April, 1876, einhrnoing tho said Little’s patents, woro
placed in the hands of tho snid Gould at tho snmo time with
tho said two letters of instruction, each hearing date 16th
April, 1876.
Tho said defendants, tho Atlantic and Pacific Telegraph
Company, had no right to a partial performance of tho snid
bargain for tho sale jointly of the said several rights and
interests, and the said company have disqualified and inca¬
pacitated themselves from tho fulfilment of tho said bargain,
the said company having without the consent of plaintiffs
I made a separate bargain and contract on account of the said 246
S company, with the said Little, for the purchase of his
interest in the snid patents granted for his said inventions,
whereby the said defendants have become entitled to the
J said Little’s beneficial interest in tho said patents, tho legal
title thereto being vested in the National Telegraph
Company, subject to tho equitable rights of certain other
19. The said George Harrington being in Europe, and
unable from sickness to perform his duties as trustee as 247
aforesaid, the Atlantio and Pacific Telegraph Company,
1 tho said Jay Gould and others, woro by certain notices in
writing dated New York, 27th August 1375, notified by
11. W. Hassell, on behalf of tho said J. C. Hcift, 1. A.
Edison, Seyfert, McManus & Co., and others entitled to
tho proceeds of any sales that might bo made of .the said
patents and inventions, that tho said transfers by tho said
Harrington to tho said Gould, benring dato 9th April,
, 1875, and 1st January, 1876, woro and each of them was
inoperative, by reason of tho refusal of the Atlantio and 248
Paeifio Telegraph Company to comply with the torms on
which they wore to linvo boon entitled to purchase tho
proporty thereby intended to bo transferred to tho said
Gould for their benefit. And tho said company were by
tho snid notices notified and requested to discontinue forth,
with tho use of said inventions of tho snid Thomas A.
Edison. , . , . .
Which snid notices woro duly served on tho Atlantic and
Paeifio Telegraph Company on tho 27th day of August,
1875, and on tho snid Jay Gould on or about tho 80th day 249
of August, 1875. Aud the said notices have been ratified
by your orators. , .,
*'/ A further notice was given to tho Atlantic and Paeifio
0 Telegraph Company, on tho 17th September, 1875, by the
I said 11. W. Russoll, on behalf of tho parties interested as
I aforesaid, setting forth tho particulars of the original eon
I tract made by the said Jay Gould, on behalf or for tho
ft benefit of the Atlantic and Paeifio Telegraph Company, on
i] 80th December, 1874, and stating what had been done
250 under and in pursunncc thereof, and the torms and condi- n
tions upon which tlio said dcods had been put in the hnuds I
of tlie said Jay Gould, and demanding the return of the said I
deeds, in order that they should bo cancelled. |
20. The said the Atlantic and Pacific Telegraph Com- hi
puny hath rofused to deliver to the said Jay Gould the said j
81,800 shares of the said stock for distribution as aforesaid, |
and hath also refused to deliver the said 8,200 shares as I
aforesaid, in accordance with the torms of the said proposed ij
251 salo. And tho said proposed purchases of the said patents jj
and inventions have been wholly abandoned by tho Atlantia |
and Pacific Telegraph Company, whoreupon tho said deeds (j
purporting to bo tho deeds of tho transfer mado by tho said U
Goorge Harrington to tho said Jay Gould, and tho said
deed purporting to bo a dood of transfur to tho Atlnntiu
and Pacific Telegraph Company, are and oaoh or them is <
wholly inopornlivo and of no ell’eet. And the Atlantic
and Paoifie Telegraph Company have no longer any li- j
oonse, verbal or olhorwiso, express or implied, to use the |
252 said telegraph system, machines, apparatus and devices in- |
vonted by tho said Edison, and ombraoed in by tho said H
assignments. ij
21. On or about tho first day of January, 1875, tho said j •
Goorge Harrington, in tho expectation ami beliol that tho |
said proposed bargain mentioned in tho said memorandum, ■
bearing date 80th December, 187-1, would bo consummated, 1 ;
did execute and deliver to tho said Jay Gould a certain |j
deed, purporting to bo an assignment by tho said George |
„„ Harrington to tho said Jay Gould of tho said inventions of |
the said T. A. Edison in duplex and qundruplox tele- II
graphy, savo and except as therein mentioned. Which I
said deed bears date tho 1st day of January, 1876, and fl
purports to bo lor tho consideration of one dollar and X
other considerations, And tho said deed professes to l|
make a substitution of tho said Jay Gould in tho place of i ,
tho said George Harrington, ns attornoy in fact for tho It
said T. A. Edison, under tho authority of tho said recited tj
deed, bearing date tho 4th day of April, 1871.
65
A copy of which said deed of 1st of January, 1876, is 254
hereto appended, being Exhibit No. 8.
22. And tlie said Gcorgo Harrington oxceuted a similar
deed* dated 9th March, 1875, for tho purpose ns therein
alleged of correcting certain errors, a copy of which said
deed is hereto appended, being Exhibit No. 12.
Tho said T. A. Edison, by deed dated 4th of January,
1875, recorded January 6, 1876, appointed tho said Jay
Gould to bo his attorney for tho purpose of selling and
transferring his right, titlo and interest in or to his invon-
tions of improvements in duplex and qundruplox tolo-
graphy.
A copy of which said deed is hereto appended, boiug
Exhibit No. 9.
28. Tho said T. A. Edison, on or about tho 6th day of
January, 1875, sold to tho said Jay Gould for tho sum of
thirty thousnnd dollars, his, tho said Edison's share, right
and interest in tho fruits and proceeds of tho said inven¬
tions of duplex and, qundruplox telegraphy, and by deed
dated 0th January, 1875, tho said Jay Gould, under tho
alleged authority of tho said dood dated 1st January, 1875,
ns tho attorney of tho said T. A. Edison, made, executed
and delivered a certain instrument in writing, which pur¬
ports to bo an assignment to S. M. Mills by tho said Jay
Gould of tlie said share, right and interest, tlie snmo being
ouo third of such proceeds as aforesaid. Which said last
mentioned deed was recorded in tho Patent Oflico at Wash¬
ington on April 10th, 1876, and n copy thereof is hereto
appended, tho same being Exhibit No. 10.
Tho said S. M. Mills acted in tho said transnotion merely
ns tho agent of tho said Jay Gould. " ’ '
Tho said S. M. Mills, by tlood dntod 11th January,
1876, in consideration of $30,000, assigned to tho Atlantic
and Pncifio Telogrnph Company whatever right and in¬
terest might have been acquired by him ns aforesaid.
Tlie last mentioned deed was recorded in tlie Patent
Office nt Washington, April 10th, 1876, and a copy thereof
is hereto appended, being Exhibit No. 11.
9*
268
2‘1 The said deed dated 1 January, 1876, was made in
accordance will, tl.o said agreement of 30 December, 1871,
and in the full confidence and expectation that the bargain
thereby proposed would bo promptly fulfilled, and upon |
the supposition that such transfer delivered in escrow or
conditionally for the benefit of the intended purchaser, the
Atlantic and Pacific Telegraph Company, would strengthen
the ease in favor of said Harrington’s title against the West¬
ern Union Telegraph Company, which company falsely
claimed to have made a contract with said Kdison for tho
purchase of the said inventions from him and George 11.
Prescott. The said Geoigo 11. Prescott was nt that time
claiming to be the owner of the legal title to an undivided
moiety of the said inventions in duplex and quadruples
leleginphy by virtue of n certain deed or assignment made
to him by said Kdison, dated 10th August, 1874, which as¬
signment had been inndvcitcntly and by mistake made by
the said Edison upon the erroneous supposition that the said
inventions were not embraced in and by the said partnership
deed of 1 October, 1870, and tho said assignment from the
260 said Edison to the said Harrington, dated 4 April, 1871.
26. It was not understood and agrood, by and between
tho said Harrington and Gould, upon tho treaty for tho said
provisional or conditional deed of 1 January, 1876, that
the said Gould was, for tho nominal consideration of ouo
dollar named in tho said deed, to bccomo tho owner of tho
said inventions in duplex and quadruplex telegraphy for
his own individual benefit. Nor was it understood and
coiving any consideration therefor for the benefit of the said
Edison and the said lleill'and McManus and the other asso¬
ciates of tho said Harrington, who had supplied tho pri cipal
part of the funds required for and used in tho development
of the said inventions.
But nt and before tho date and execution of the said
deed of 1 January, 1876, and at and before the date and
execution of the said deed of 9 March, 1876, purporting to
67
bo a repetition of tho said deed of 1 January, 1876, with 262
a mere correction of a verbal error therein, it was under¬
stood and agreed, by and between the said Harrington and
Gould, that the Atlantic and Pacific Telegraph Company
should have tho benefit of tho transfer thoreby made upon
the completion of the bargain mentioned in tho said agree¬
ment of 30 December, 1874, which embraced all the in¬
ventions of the said Edison in what is commonly known
as automatic telegraphy, and all his inventions applicable
thorcto, and accordingly embraced the said inventions in
duplex and quadruplex telegraphy, tho saino being appliea- 263
bio to automatic telegraphy.
26. About tho time when tho said Gould ontored into
tho said contract with the said Hcilf and McManus, dated
80 December, 1874 (which contract tho said Edison ap¬
proved), tho said Gould urged the said Edison to break off
all connection with tho Western Union Telegraph Com¬
pany and said Prescott, and heartily cooper, .to ,wth -..id
Gould, lioili; McManus and Harrington, so that tho Atlantic
and Pacific Telegraph Company should, in accordance with 264
tho intentions and expectations of tho parties to tho said
contract, have tho full benefit of tho said Edison’s inventions
in duplox.nnd quadruplex telegraphy, and of all improve¬
ments which might bo made by him thereon, and that lie
should bccomo tho electrician of tho Atlantic and Pacific
Telegraph Company at a liberal salary.
And tho saitl Edison agreed to comply with tho said re-
| quest, it being at tho same time arranged that lie should
| rcccivo at once tho estimated prieo and valuo ot his said
| one third shnro of tho said inventions in duplex and quad- 266
i ruplox telegraphy, without waiting for tho completion of tho
I bargain contemplated and provided for in tho said memo-
1 rttndum of agreement datod 80 Decomber, 1874.
And tho said Edison further agreed with said Harrington
and his said associates and with said Gould, that ho, said
Edison, would return to tho Western Union Telegraph Com¬
pany tho money ho had received from them, and would also
reimburse whatever paymonts might have been mado by
206 add Prescott under or in consequence of tho snid contract 1
between him and said Edison. .1
27. The transfer made ns liorciu montioned by the said I
Edison, tbrougli snid Gould, bis attorney, to S. M. Mills, f,
was so made in pursuance of the said last mentioned agree- |i
meat and was intended to bo, and was in fact a transfer . t
of snid Edison's share of ono third of the proceeds o! any I
sale or other disposition which might bo made by the said |
Harrington, undor the said trust and power herein beloro /
207 referred to. a
28 The snid Harrington -intended to sell nnd transfer |j
to tlio Atlantic nnd Pacino Telegraph Company the said |
patents nnd inventions specified in the snid deed dated 0 , ;
April, 1875, in ease the snid company should pny the eon-
sidcrnlion speeinod in snid Harrington’s said letter to said i
Gould, dated 10 April, 1875, and not otherwise, and tlio ■
said Harrington was duly authorized to mako such sale and j
transfer by the said Edison, and the said Heill' and Mo- ■;
Manus mid others, tlio snid Harrington’s snid associates. |
208 And they npproved of and ratified and confirmed the said |
bargain, but by mistako and inadvortonoo the said liar- j.
rington, instead of making such transfer to tho said com- I ;
puny, nnd delivering the instrument of transfer to the said
Gould in escrow, for him to deliver tho same to the sail
company on their payment or the consideration aforesaid,
mndc the transfer direct to tho snid Gould, at the same tunc,
however, directing hnn in manner aforesaid, by the s.ui
instrument in writing accompanying tho snid transfer, lint
to deliver such transfer to tho said company until they ;
269 should pny the consideration aforesaid. f:
20. And your orators claim that neither they nor their j
said associates beneficially interested with them as aforesaid, l
should bo prejudicially nflootcd by or by reason of tho said j ;
mistake and inadvortonoo of tho snid Harrington, acting ns -
such trustee aforesaid. And that neither tlio said Gould,
nor the said tho Atlantic nnd Pacific Telegraph Company, l
claiming by, through or under him, should be permitted to
take advantage of tho snid mistake and inadvertence of the 270
said Harrington, to tlio detriment of your orators and their
snid associates ; but that your orators should be relieved
therefrom by the decree of this court in this cause.
80. Tlio snid Gould recorded tho said dood of 9th
April, 1875, on tho 7tli May, 1875, and contracted to trans¬
fer to tho Atlantic and Pacific Telegraph Company what¬
ever title ho may hold under tlio said deoil of 9th April,
1875, nnd tho said company now fraudulently clnun and
protend that by virtuo of tho last mentioned contract tlioy 271-
hnvo lawful right to uso tho snid patented inventions de¬
scribed in tlio said dood of 9th April, 1875. And that tho
assignment tliorcby mado to the said Gould, not having
boon delivered technically in tho form of an escrow dood,
is valid and efl'eotual in law, and that the snid company are
under no obligation to pny tlio consideration specified in tlio
snid Harrington's said letter of 10th April, 1875, and in
the said agreement dated 80 Dor,, 1874, mado by the said
Gould, for tho benefit of the snid compnny ns aforesaid, but
that they can hold and enjoy tho said property without
paying tho said consideration to tho parties ontitled to tho 272
snmo ns aforesaid, or any part thorcof.
81. And the snid company protend that they are bona
fuk purchasers of tlio said patonts nnd inventions, holding
tho same under recorded transfers thereof, without any no¬
tice, actual or constructive, of tho trusteeship of tho snid
Harrington ns aforesaid, anil tho equitable rights. of the said
Heill' and McManus and otlioro, tho associates of your ora¬
tors as aforesaid j although, in truth nnd in fact, tho snid
Gould negotiated tho snid bargain with tho said Heill’ 2/8
and McManus, in tho first instance, for tho benefit of tho
snid tho Atlantic and Pncifio Telogrnph Compnny, nnd
they, through such negotiation and snid Gould's agency, ob¬
tained possession of tho said patented machines and npprn-
tus and other proporty ns aforesaid, nnd got tho full uso
of snid Edison’s inventions of chemical automatic tele¬
graphy.
82. And tho said Jay Gould reported from time to timo
274 to the said, tlio Atlantic and Pacific Telegraph Company,
nil his snid negotiations and operations with the Automatic
Telegraph parties, the said Kill, MoM inuS Hamng.oa
and Edison. And the said Gould arranged w.tl. the said
the Atlantic and Pacific Telegraph Company for their
obtaining possession of the said patented apparatus and I
the said telegraph line, and a provisional license to use tlio
said inventions upon all their telegraph lines, in pursuance
of tlio contract negotiated by tlio said Gould.
276 33. And tlio said Gould, at tlio time or the transactions
hereinbefore mentioned or referred to, otvnod or centre led j
a mniority of the shares of tlio stock of the said the Atlan¬
tic and Pncillo Telegraph Company, and was the most influ¬
ential of the d ectors of tl t co p n>, and m tact, con¬
trolled thoir operations. „ ,,
And it was supposed by tlio said Harrington, Ho.ll, Mo-
Manus and Edison, that any arrangement made by the
said Gould, on behalf of the said company, with them,
would certainly be fulfilled by the said company. Mevor-
276 tholoss, they now ignore tlio actings aiithloings of the mutt
Gould in tlio promises, while claiming the bomlit ami au
vantago thereof.
34. The pretext now sot up, that 1 10 said Gould, by tlio
said deed of Oth April, 1875, bocnino tlio owner of the pat¬
ents and inventions therein described, is an aftorlhought in¬
consistent with tho acts and declarations of tlio said Gould
and his representations in writing, mado after tho execution
and delivery of the said deed, to parties interested m tlio
277 said inventions. And tho said tho Ailantio and P-.-f-o
Telegraph Company, on taking tho said transfer from t he
said Gould to thomsolves by the said deed dated 10th duly,
1875, paid or promised to pay him only such sums of money
° as ho had disbursed in purchases of ami loans upon tlio
seeuritv of some of tho said 81,800 shares of stock, which it
was expected would bo issued and delivered as aforesaid to
tlio various parties entitled to tlio same in pursuance ol t io
said contract of 30th Dee., 1874, and tlio said letter of in¬
structions of lOtli April, 1875.
71
And tho said Gould, by the said deed of transfer to tbo 278
said company, merely transferred to them whatever rights
he hud acquired as aforesaid, and (lid not nssumo to sell and
transfer to thorn tho title to tho said patents and inventions,
any or either of them.
3-ln. And tlio said Harrington did not, by tho sale and
assignment which lie mado as hereinafter mentioned to said
Gould, of his, said Harrington’s, rights and interest in
said Edison’s inventions after tlio delivery of tho said deed
of Dili April, 1875, to tlio said Gould, intend to or profess
to sell or assign to the said Gould, and tlio said Gould (lid 270
not then and thereby expect, intend, or profess to purchase
and take from the said Harrington any right or titlo in
conflict with, or in derogation of tlio right and title spcci-
; fied in the said deed of Otli April, 1875, qualified and ex¬
plained as aforesaid by tho said letter of instructions accom¬
panying tlio same. And which right and titlo it was
intended should bo vested in tho said Gould coiiditiomilly,
and to take elliiet for tlio benefit of tlio said company, upon
tlio payment of the consideration for tlio same as aforesaid,
and not otherwise. 280
Nor was it competent for tho said Harrington to make,
or for tlio said Gould to receive any assignment or transfer,
in such form mid manner ns to defeat tlio rights of tho said
Edison, lleilV, McManus and others, their associates, as
aforesaid, which had been mado with their approval under
tho snid sole as aforesaid, of tho snid inventions, to tho snid
S company lor the consideration of 81,800 shares of thoir
• stock ns aforesaid.
U 86. The snid J. 0. Eeiff, J. McManus and others, nsso- 281
Relates of tlio said Harrington, ns aforesaid, whilst approving
! 4of the bargain nmdo with the said ,Tay Gould, on behalf
| Jof tho Atlantic mid Pacific Telegraph Company, and also
i Jnpproving of tho distribution of tlio purchase money, as
jdetailed in snid letter of instruction of 16th April, 1876,
||wcrc not nwnro of tho form of tho transfer executed by tho
ffsnid Harrington ns aforesaid, to bo delivered on tho com-
ilplction of tho said purchase, but they assumed it to bo
73
2 similar in form to the tram ter executed by the Automatic
Telegraph Company, dated 10th April, 1875, and delivered I
to the said Jay Gould, at the same time with the said deed j
of 9th April, 1875, to wit, on the 10th April, 1875, with
the two letters of instruction of that (late. !
said, in developing J
, stated by the said Jj
76, found to ho the I
80- The amount expended ns aforesaid,
the said inventions, was by an account _
Harrington, in the mouth of April, 1876,
sum of four hundred and oighly-four thousand
nag and forty dollars. And by the said account, the said liar- |
ringtou credited himscit with the sum ol one hundred mid M
six thousand throe hundred and fifty dollars ($100,860), [|
part of the said Bum total, which entitled him to 4,52-1 shares |
out of tho said 31,800 shares.
And it was agreed, by null between tho said George liar- i
ringtou and his said colleagues, that the said 81,800 shares i
of stock of the Atlantic and Pacific Telegraph Company 5
were to be distributed as per schedule in the said Harring- 1.)
ton’s letter ef instructions to the said Jay Gould, dated 10th jf
284 April, 1876. fe
87. In the said schedule contained in the said loiter of j j
16th April, 1875, from the snid George Harrington to the
said Jay Gould, 12,254 shares are allotted to the said ;
George Harrington, but of those shares only 4,254 u ere to |
belong to the said George Harrington, the remaining 8,000
being allotted to him merely for the purposo of the distri- :
bution of the same amongst certain parties who wore to bo j
entitled to tho same by virtue of certain nrrnngomouts
„85 made by tho snid Georgo Hnrrington and ids said col¬
leagues, if the said bargain of 80th December, 1874, should
be completed.
And in the same schedule 1,428 shares aro allotted to
tho snid J. 0. lteilf, as Secretary of tho Automatic Tele¬
graph Company, and which said allotment "was not (undo
for the benefit of tho snid J. C. Reiff, but the said shares ,
were to have been received by him for distribution amongst |
various parties, in payment of legal and other expenses and
outgoings in pursuance of certain arrangements made by
tho snid George Harrington and J. C. Reiff, and their said 286
colleagues, and which said arrangements wero not to take
effect if the said bargaiu of 80th December, 1874, should
not bo completed. ,
And at the foot of the snid schedule, after the signature
of the said Harrington, thero is a memorandum in writing
by which the snid Georgo Harrington advised that a ccr-
tain number of shares should be deducted from the 7,057
shares allotted to tho said J. C. Reiff, in the said schedule,
and that the shares so dcductod should bo redistributed, as
ihorcin mentioned. But such ndvico was given without 28
the authority or nssont of tho said J. O. Reiff.
88. Tho said Jay Gould, on or about tho twentieth day
of April, 1875, purchased from the snid Georgo Harrington
his right to tho said 4,254 shares of stock, which it was an¬
ticipated would bo issued to him for his own benefit, as
aforesaid. And tho said Jay Gould paid tho said Georgo
Harrington tho prico agreed upon for tho said purohasc,
•namely, 25 dollars per share, amounting to $100,350, pay-
abloas follows: 10 per cent, in cash and 90 per cent, tn 28
incomo bonds of tho Northern Central Railway Company.
And the snid Jny Gould, in or about tho month of May,
1875, purchased from tho said Samuel B. Parsons, on tho
same terms, his right to tho snid 600 shares of tho said
stock, which were to knvc been issued to him as aforesaid.
■Wherefore tho snid Jny Gould iB entitled to tho shares,
rights and interests of tho said George Harrington and
Samuel B. Parsons, respectively, of, in and to tho proceeds
of any sale or disposition that may bo made of tho said
patents and inventions by competent authority. 2-
89. Tho defendants, tho Atlantic and Pncifio Telegraph
Company, claim that tho said Jny Gould has made a
transfer to tho Atlantic and Pacific Telegraph Company of
his claim, right, title and interest, whatever the same may
he, to tho said patents and inventions, or to any proccods
thereof, under and by virtue of the said contracts with and
transfers to him, tho said Jay Gould, ns aforesaid.
By which said alleged transfer from tho said Jay Gould,
200 tlio Atlnntic and Pacific Telegraph Company claim that they 1 ownership of tlio said Harringtons interests in tlio snmo,
linvo acquired whatever rights tlio said Jay Gould became I nnd n'so lbo interests of the snid Parsons therein, wliioh
possessed of by virtue of tbo said sales to him of tlio shares I tl10 Atlantic and Pacific Telegraph Company falsely claim
of stock which it was expected would bo issued to the said Ft anA llllo°° t0 bo tUo tit,os lo sopurnto parts or shares of tbo
Harrington and Parsons respectively. Hut the Atlanlieawl snitl ],lltont3 nml mvontions, by virtue whereof tbo said
Pacific Telegraph Company have not acquired any rh'htor \ hk'fringlou and Parsons were respectively tenants in com-
titlc, in or to tlio said patents and inventions, under the said ft ,ncm "'itl1 ot,lora of 11,0 Sllil1 l,ntonl3 nnd illvo"tions ; wlioroas
deeds of tlio 1st Jnnunrv 187-5 'lit, Mn,-,.h ifi7r. „,„i no, /! the said coinpanv well know tlio fact to bo that tlio same
April, 1875, which were placed in the hands of their said
agents as aforesaid, to bo delivered to them in ease they
291 should make the payment which they have refused to lnnko
as aforesaid. Hor have the Atlantic nnd Pacific Telegraph
Company acquired title to the said patents and inventions
specified in the said last mentioned deeds, nor to any or
either of them, nor to any separate or distinct part or share
thereof.
40. The defendant, the Atlantic and Pacific 'Telegraph
Company, notwithstanding the said notices given to them
as aforesaid, persist in using the snid patented machinery'
and apparatus, and system of chemical automatic telegraphy
2 patented aforesaid by the said T. A. Edison, ami also
claim and pretend to have and own the full right nnd title
to the said invention of duplex and quailruplex telegraphy.
Sometimes the said company pretend that, having taken
an assignment from Jay Gould of bis alleged right and
title in and to the said patents and inventions, they have
acquired a good title to the same without paying tlio con¬
sideration which the said Jay Gould undertook should bo
paid by the snid company for the same, and tlint the said
293 con,lm,1J bilvo tbo r'f5bt 10 b°l(l title under the said last
mentioned deeds, regardless of the fact that their agent
received them on the condition that tlio said company were
not to be ontillod lo the transfers thereby made, unless and
until they should pay 31,800 shares of their stock for the
property thereby proposed to bu transferred as aforesaid.
At other times tlio defendants, the Atlantic nnd Pacific
Telegraph Company, pretend and givo out that the said
deeds of transfer failing to bo operative, they are entitled
to use the snid inventions because they have acquired the
fi were held by the said Harrington in trust in such form,
■j and so that there should bo no division or separation of tlio
| title thereto, whereby tlio interests of the parties beneficially
: 1 interested in the fruits and proceeds thereof could bo preju-
4 dicinlly affected. And the fact is that tlio said Hnrring-
: ’’ ton and Parsons did not, nor did either of them claim or
i nssumo any right to sell and transfer any sepnrato share or
] shares, right or title in and to the said patents nnd invetl-
| tions, or any of them.
IAtid, at other times, the said company pretend and givo
out that by virtue of tlio said deed of lltli January,
i: 1875, tlioy are entitled to ono third pnrt of tlio snid invon-
■ tions of duplex and quadruples telegraphy, and of
'! any patents that may bo issued for tbo same ; whereas,
‘ in truth, tlio said company well knew the fact to bo that
I ; the said Edison could not sell and transfer any title to the
j said inventions of duplex nnd quadruplex telegraphy cm-
| braced in the last mentioned deed, or to any patents that
j might be granted therefor, but only agreed to sell, as ho
: j bad a perfect right to do, all his interest, the same being
• ] ono third of, in nnd to the fruits and proceeds of the said
lly virtue of which said purchase from the said T. A.
’ Edison of his said one third share of tlio said inventions of
duplex and quadruplex telegraphy, tbo said the Atlantic
and Pacific Telegraph Company will bo entitled to recoivo
one third pnrt of the net proceeds of any sale or other dis¬
position which may bo made by competent authority of the
| said inventions, or of any patents for the same.
! 41. The Atlantic and Pacific Tolcgrnph Company bo-
76
298 foro, and when they took any transfer from the said j|
Jay Gould, well know, and tho said Jay Gould before and J
when ho took tho said deeds of 9th April, 1875, and 1st I
Jnnnnry, 1875, well knew tlml tho said Harrington wns a fj
trustee for tho said Roilf and McManus and their asso- [j
elutes, ns aforesaid, and that tho said Harrington’s actual |
right and interest in and to tho procoeds of tho said patents l
and inventions wns but a small part or share thereof, and J
tlmt tho said Harrington did not assume to sell and convoy /
unto tho said Gould tho patents and inventions mentioned |
299 or referred to in tho said deeds of 1st Jnimnry, 1875, and i
9th April, 1875, for any other considerations than those \
heretofore stated ; and that it wns not intended by tho said I
fictitious deed of 1st January, 1875, to transfer to the said I
Gould tho full and nhsolulo title to tho inventions thorcin :
specified for tho nominal consideration of ono dollar. And
accordingly tho said defendants, the Atlantic and Paeiflo
Telegraph Company, on 6lh Jnnnnry, 1875, purchased ns
aforesaid from tho said Mills said Edison’s ono third share .1
of the beneficial interest in tho said inventions, for tho sum L
of thirty thousand dollars. I
The said Jay Gould, whon ho took the said deeds from fj
tho snid Harrington, dated respectively 1st January, 1S75, : |
and 9th April, 1876, well knew and had full notice of tho j j
terms and conditions of tho said partnership between tho I I
snid Edison nnd Harrington, nnd also tho terms and condi- j
lions in favor of the snid Edison, upon which tho snid liar- |
nngton was, by tho said deed of 4th April, 1871, empow- j
orod to disposo of tho said inventions. ;
And tho snid articles of copartnership, dnted 1st Octo- jy
ber, 1870, nnd tho said deed or 4th April, 1871, are recited I
in the said deed of transfer from the snid Harrington to 1
the said Gould, dated 1st. January, 1875, under which tho |
defendants, tho Atlantic nnd Pacific Telegraph Company, J
claim title to said Edison’s share and interest of and in tho If
proceeds of the said inventions of duplex nnd quadruples jl
telegraphy. g
And tho snid deed of 9th April, 1875, refers to tho snid |
power of attorney from tho snid Edison to tho said liar- 802
rington, contained iri the snid deed of 4th April, 1871.
And tho said company had, before they took or contracted
to tnko any transfer from tho snid Jay Gould of nny right
or interest in the said inventions, constructive nnd direct
notice of tho snid rights of said Edison, under nnd by
virtue of tho ■-aid recited deeds nnd instruments of writ¬
ing, and well know that tho said Harrington wns a partner
with nnd trustee for tho snid Edison in respect to tho said
patents and inventions,
42. The said Georgo Harrington nnd the snid Jay 808
Gould have always recognized nnd admitted snid trust and
tho aforesaid rights of tho snid J. C. Iteifi' ami his said as¬
sociates, who furnished nearly nil tho funds required for
tho taking out of the snid patents nnd tho testing of tho
said inventions as aforesaid ; but tho defendants, tho At¬
lantic and Pacific Tolcgrnph Company, have falsely
assumed that tho said Gould nnd Harrington conspired
together to client and defraud tho cestuis qui trust
of tho snid Harrington, by an absolute transfer from said
Harrington to said Gould of tho property held ns afore- 804
snid in trust by tho said Harrington ; nnd that such trans¬
fer was to be mndo without tho payment of nny considera¬
tion, for the benefit of tho snid Edison and others, tho
ccstms qui trust aforesaid. And tho Atlantic and Pacific
Telegraph Company hnvo falsely assumed that although
they had, through their said agent, Jay Gould, and other¬
wise, full notice of tho said trust, thoy can defeat it
nnd defraud tho said inventor nnd patentee nnd tho other
parties interested ns nforesnid, by taking an assignment
from snid Gould. 305
43. It wns provided in tho said memorandum of agree¬
ment, dnted 80th December, 1874, that tho said Harrington,
Edison nnd llciff, nnd their associates, tho owners of the
said system of automatic telegraphy, should participate in
the management of tho affairs nnd business of tho Atlnntio
and Pacific Telegraph Company, nnd should hnvo a repre¬
sentation in the oxeeutivo committco of tho board of di¬
rectors of tho said company.
78
806 But tlio said company linvo repudiated that arrange¬
ment, and the said owners of the said system of automatic
telegraphy have had no part or share in the management
of tlie business and affairs of the said company ; and tlio
said system lias been placed at the mercy of employees
of the said company, who are opposed to tlio introduction
of tlio automatic telegraph machinery to supersede their
skilled manual labor; and tlio advocates and supporters
of the said system have been disregarded and their advico
rejected by tlio said company ; and they, after securing
tlio benefit of tlio business of -the said telegraph lino from
8Q7 Now York to Washington, linvo dismantled tlio same, or
have by ncgloot allowed a part of tlic said lino to become
dilapidated, and linvo taken or allowed the same to bo
taken away.
4-1. And by renson of the bnd faith of tlio sniil defend¬
ants, tlio Atlantic and Pacific 'Holograph Company, tlicro
has been no development of cortnin very important inven¬
tions and discoveries mado by tlio said T. A. Edison in
olcotric telegraphy, including : ,
808 1. A repeater for chemical automatic telegraphy, where¬
by messages can bo transmitted over lines exceeding
one thousand miles in length, at the rate of several
hundred of words per minute, without delay or in¬
terruption.
2. An improved system of telegraphy, whereby mes¬
sages transmitted by Edison's chemical nutoniatie
telegraph, at tlio rate of sovcrnl hundreds of words
per minute, can bo printed off at tlio terminal sta-
309 tion in plain llomnn letters ready for delivery, thus
avoiding tlio delay and oxponso of copying, and, at
tlio same time, drop copies are loft at inlcrmcdinto
stations.
Tlie said company, having refused to complete the said
proposed purchase, and having also refused to make any
proposition for a substitute for tbo said bargain, but hav¬
ing, on tlio contrary, set up tlio unfounded claims of title
as aforesaid, the said Edison has refused to put his said iin-
| provements upon tlio lines of tlio said company. And al- 810
I though tlio said proposed deed of 9th April, 1876, is con-
I fined to cert-tin patents and inventions therein specifically
I mentioned, and docs not include nny improvements thoro-
f 011 that might thereafter be mado by the said Edison, nor
any further or other inventions by him of any kind or
character whatsoever in or relating to chemical automatic
J telegraphy, oi in relating to electric telegraphy in any
I form, the defendants, tlio Atlantic and Pacific 'Holograph
i; Company, falsely claim and pretend that they aro under
i a'id hy virtue of tlio said abortivo deed of Dili April, 1876, 811
I entitled to the full benefit and ndvnntngo of tlio said new
| inventions mid improvements mado by tho said Edison.
■f And tlio said company sot up tiio refusal of tho plain-
J tills to concede and recognize tho said false claim and pro-
| tonco ns an additional oxouso for the repudiation ns aforo-
I said of the obligations of tlio said company.
, . . u|e -iuinnuo ami rnoitio Tolo-
graph Co.npaiij, under the color and prcteuco that they
lmd purchased tlio said right to tho said Edison’s system of 812
nutoniatie telegraphy, linvo obtained "very vnlunblo con-
traeu m,d arrangements with certain railroad compm-m-
namely, tlio Pennsylvania Hnilrond Com-any and tlio
Baltimore mid Ohio Railroad Company. '
' And tlie said defendants, tho Atlantic mid Pacific
lelogrnph Company, are now using, and have for a long
. time past used tlio said inventions upon their telegraph
lines, and thereby do and perform tho greater part of their
I telegraph business, being unable to do tlio same without
the use of tho said inventions; and they aro constantly 818
nddmg to and increasing tlie use thereof.
40. And your orators further show' that they have, by
formal written notice, notified tlie said the Atlantic and
1 neilic lclcgraph Company to discontinue tlio use of tlio
said patented inventions, and have requested tho said Jay
, t0 rons3'S'i or releaso to the said Georgo Harrington,
trustee, any interest which may linvo boon vested in said
80
814 Gould by tho said deeds of 1st January, 9th March and
9th April, 1875, respectively, and to return tho said deeds
to the said Gcorgo Harrington, trustee, as aforesaid. And
your orators have also required the said tho Atlantic and
Pacific Telegraph Company to account to your orators for
the use of tho said patented inventions, since they were no¬
tified in the month of August, 1875, to discontinue the use
of tho same.
And tho said George Harrington 1ms, ns president of tho
said, tho Automatic Telegraph Company, ordered that tho
815 property put into the possession of tho Atlantic and Pacific
Telegraph Company, ns staled in paragraph 14 of this bill,
shall bo surrendered by the said company.
47. The said defendants, tho Atlantic and Pacific Tele¬
graph Company, falsely claim and insist that they are uot
infringing your orators’ said patents, for that tho said com¬
pany have good right to use the said inventions by virtuo
of the said deeds by which, ns they allege, the legal title to
said patents hus been transferred to said Gould. And tho
316 sa''l defendants also wrongfully claim and insist tlint if tho
equitable title to the said patents and inventions remains
in, or results to your orators, by reason of the said deeds of
transfer having become abortive or inoperative in equity,
then and in that ease tho said company 1ms good right to
continue tho use of the said inventions under mid by vir¬
tue of tho snid bargain mudo for their bcuofil by the said
Jay Gould on 80th December, 1874, and by virtue or an
alleged part performance thereof on their part, and becauso
your orators canuot, as tho defendants allege, fulfil thoir
817,. l)art l'lc mW bargain, whereupon the defendants set up
the unfounded and unjust claim and proteneo that they can
hold and retain the said patent rights and other property ns
• aforesaid, without a settlement on the terms of the said i
bargain, and without any other bargain, terms or arrange¬
ment being made in lieu thereof.
48. And tho defendants further wrongfully claim and j
pretend that tho money paid by tho said Gould on the j
said purchase by him of tho said Harrington’s expected
81
slinrcs of tho said stock must bo returned to him or his as- 818
signs before your orators can, in tho exorcise of their rights
and titles, and in pursuance of tho aforesaid trust, suo for'
tho infringinoiit of tho said patents by tho said defendants,
49. And tho defondants further wrongfully claim and
S pretend that tho monoy loaned ns aforesaid to tho Auto¬
matic Telegraph Company must also bo repaid before tho
defendants, tho Atlantic and Pacific Telegraph Company,
can bo deprived of their alleged right of using tho said in¬
ventions upon thoir said telegraph' linos throughout tho 819
United States. But your orators maintain and show that
tho said loan was made in nccordnnco with, and in part per-
| formnneo of tho obligation of tho sniil tho Atlantio and
Pacific Telegraph Company to ndvnnco tho sum of $35,000
to tho Automatic Telegraph Company, to pay the rents,
wages, and other debts duo by them, for.and on account of
tho snid telegraph line from New York to Washington,
when tho possession thereof was given, ns aforesaid, to tho
said company, and wliioli obligation was doomed absolutely
necessary when suoli possession was delivered, and was 320
mndo a condition preoedont to such delivery of possession.
And tho said tho Atlantio and Paeifio Telegraph Com¬
pany have refused to fulfil tho snid obligation, and hnvo
broken faith in relation thoroto with tho National Telo-
graph Company and tho Automatic Telegraph Company.
And your orators, and bonefioinl owners of tho said
cquitnblc interests in tho snid'pntonts and Inventions, aro
under no obligations in respect to tho said loan to tho Au¬
tomatic Telegraph Company.
And tho Atlantio and Paeifio Telegraph Company hnvo, 321
by tho use and onjoymont of tho said telegraph lino from
New York to Washington, mndo largo profits, and onjoyod
great advantages, far exceeding in vnluo tho amount of tho
said loan to tho Automatic Telegraph Compauy.
60. And your orators aver and aro ready to maintain
that they, your orators, have, upon tho facts and circum¬
stances aforesaid, tho full and complete right and title to
11*
822 maintain this their hill Tor the infringement of the said pat- jj
onts, and the defendants have not, nor has eithor of them »
nny right to tho use of the said patented inventions or nny 1
part thereof, and that the said claims and pretences of the I
said defendants aro contrary to equity and good conscience, Ij
61. In consideration whorcof, and forasmuch as your j
orators can have adequate relief in the promises only in a I
court of equity, whore matters of this nature are properly I
cognizable and removable, to the end, therefore, thnt tlio f
223 said defendants the Atlantio and Pncifio Telegraph Com- |
pony and Jay Gould may, if they can, show why your ora- |
tors should not have the relief ltoreby prayed. fj.
And thnt tho said defendants may severally, upon their ,
sovornl and respective corporate oaths, and according to
tho best and utmost of their several and rospcclivo knowl¬
edge, information and belief, full, true, direot and perfect
answers make to such of tho sovornl interrogatories herein- :
after numbered and sot forth ns by tho noto hereunder
written they are respectively required to answer. Your i;
324 orntors hereby waiving all further or other answer, under I:
oath, to nny or either of tho charges or allegations in this I
bill which nro not the subject of the following special inter- |
rogatories, thnt is to say : '
Interrogatories.
1. 'Whether a memorandum of agreement bearing date s
on or about 80th December, 1874, was made under tho .
hands of tho said Jay Gould, J. 6. Keiff and John Me-
Manus, ns alleged in paragraph 7 of this bill. |
826 2- Whether tho said Harrington, on or about 10th j
April, 1876, handed or sent to said Gould n letlor of that |
date, and tho said deed or Oth April, 1876, ns alleged in H
paragraph 10 of this bill. fij
8. Whether tho said Harrington, on or about 16th J
April, 1876, handed or sent to said Gould a letter of thnt 1
date, and tho said deed of 10th April, 1876, as alleged in 9
paragraph 11 of this bill. <1
-1. Whether notices in writing dated on or about 27th
August, 1876, notifying tho said Gould and the Atlantic
and Pncifio Telegraph Company to discontinue tho use of
the said inventions of tho said Edison, wero served upon
or received by tho said Gould and tho said company
respectively.
6. AY bother tho President of tho Atlantic and Pacific
Telegraph Company, its Yicc-President, Secretary and
Treasurer, and tho said Jay Gould or nny or either of them
have or has declared before tho commencement of this suit
that the said company did not intend to, and would not
issuo 81,800 shares of tho stock of the said company, to bo
distributed in accordance with tho said letter dated 16th
April, 1876 ; or that tho provisions and conditions of tho
said proposed bargain set forth in tho said memorandum
of agreement dated 80th December, 1874, had not been
complied with by the party therein called 11 Tho Automa¬
tic," whoreforo tho Atlantio and Paoifio Telegraph Com¬
pany was not bound to, and would not issuo tho stock
therein referred to.
6. Whether tho Atlantic and Pacific Telegraph Com¬
pany has offered to pay in lieu of tho snid 40,000 shares
any smaller number of shnres of snid stock, or any other
consideration ns the prico of tho said patonts, inventions and
property proposed to bo sold to tho said company, in ac¬
cordance with tho said memorandum of agreement, dated
80th Decomber, 1874.
7. Whether tho defendants, tho Atlantio and Pacific
Telegraph Company, on or about 1st February, 1876,
obtained possession of tho snid telegraph lino running
from Now York to Washington, and tho offices on tho
snid lino, and the equipments thereof, with tho machines
and apparatus therein, ns nllegcd in paragraph 14 of this
bill, or how otherwise.
8. Whether the defendant, Tho Atlantio and Pacific
84
330 Telegraph Company, has made, as alleged in paragraph 18
of this bill, a separate and independent purchase of some,
and if any, what right or title held by George Little, which
according to the said arrangement with the said Gould
was to be included in the transfers to bo made to the
Atlantic and Pacific Telegraph Company, in consideration
o£ the said 40,000 shares of stock.
62. And your orators pray that it may bo adjudged and
decreed :
831 (1) That tko defendants, the Atlantio and Pacific Tele¬
graph Company, their clerks, attorneys, ngonts, servants
and workmen, be perpetually onjoinod and restrained from
directly or indirectly using or causing or authorizing to bo
used, tho said patented inventions, or any or cither of
them, or any part thoreof. And that tho said tho Atlantic
and Paoific Telegraph Company shall account to your
orators for tho profits made by tlioir uso of tho said
patented inventions, any or citlior of them, or of any part
thereof And shall also account for and pay over to your
382 orators three times tho amount of tho damages sustained
by your orntors by reason of tho infringements of their
said 'rights, by tho said tho Atlantic and Paoifio Telegraph
Company.
And that a preliminary injunction may bo granted,
enjoining and restraining the defendants, the Ail nine
and Pacifio Telegraph Company, thoir attorneys, clerks,
agents, servants and workmen, to tho same purport, tcnoi
and effect heretofore prayed for in rogard to said perpetual
injunotion.
333 (2) That the said doeds of assignment from tho said
Goorgo Harrington to the said Jay Gould, dated respect,
ively 1st January, 1876, 0th March, 1376, and 9th April,
1876, nrc, and each of them is inoperative and of no legal
effect.
(3) That tho said Jay Gould and tho Atlantic and
Paoifio Telegraph Company have not, nor hath oithcr of
3 85
I them, any right or titlo under or by virtue of tho same, 334
jj in or to the said patents and inventions, any or either of
I them.
[j (4) That the said' Jay Gould and tho Atlantic and Pa-
j ci lie Telegraph Company have not, nor hath either of
i them any right to continue tho uso of the said patented
I machines, apparatus, doviecs, means and contrivances, nor
/ any or either of them.
((6) That tho said Jay Gould and his assigns shall trans- 885
\ for whatever titlo tho said Jay Gould may havo acquired
i ill and to tho said patents and inventions, under or by
|s yirtuo of tho said deeds of 1st January, 9tli March and
' fltli April, 1876, or relcnso all claim thereto unto your
orntors.
(G) That tho said Jay Gould and tho Atlantio and Pa-
ft cifie Telegraph Company, ami each of thorn, bo restrained
I' from selling, disposing of, or transferring in any way, tho
I said inventions and patents, any or either of them, or any 333
Ej right or interest therein, any or cither of them, or any part
I thereof, without tho order of this court.
(7) That llio said Jay Gould and tho Atlantio and Pa-
! eifio Tolegraph Company, respectively, bo also restrained
■ from acting in any way under citlior of the powors of at¬
torney contained in tho said doeds of 1st January and 9th
f March, 1875.
I And that they bo also severally onjoinod from acting
or assuming to net under tho said powor of attorney from 337
said Edison to said Gould, bearing dale 4th January, 1876,
in such a way ns to conflict with tho powers and rights of
tho said Harrington, under and by virtuo of the said deed
of 4th April, 1871.
(8) And that your orators may havo such otlior and
further relief in tiio promises ns tho nature of tho easo may
require, and shall be agreeablo to equity and good con¬
science.
8 The defendant, Jay Gould, is required to answer the in¬
terrogatories in the foregoing bill of complaint, numbered
respectively, 1, 2, 3, 4 and 5.
And the defendant, the Atlantic and Pacific Telegraph
Company, is required to answer interrogatories 4, 0, 0, 7
and 8.
Tiios. A. Edison.
BUTLER, STILLMAN & HUBBARD,
Solicitors for Complainants.
CIRCUIT COURT OE THE UNITED STATES
IE SOUTHERN DISTRICT OF NEW V
Thomas A. Edison, one of tho plaintiffs abovo named,
being duly sworn, deposes and says that tho foregoing
,0 complaint is true to bis own knowledge, except ns to those
matters thorcin stated on information and belief, ami ns
to those matters ho believes it to bo true.
Sworn to boforo me, this 1
17th day of May, 1876, j
THOMAS A. EDISON.
George E. Betts,
U. &■ Commissioner.
Whereas I, Thomas A. Edison, or tho City of Newark,
Stato of New Jersey, for oortnin valid and valuable con¬
siderations to me in hand paid, and in further considera¬
tion of certain covenants and stipulations to bo fulfilled by
Georgo Harrington, of Washington, District of Columbia,
did stipulate and agreo to invent and construct for tho said
Harrington full and complete sots of instrumcnte and ma. ,
ohincrv that should successfully and economically dovelop
into practical use tho Little or other system of automatic
or fiU system of telegraphy, and subsequently to improve
mid perfect such instruments and machinery by adding
‘thereto, from time to time, such further inventions as ex¬
perience should demand and my ability as an inventor and
electrician', night suggest and permit-nml furthermore, to
prepare or cause to ho prepared tho necessary description
papers, tho models and drawings requisite to obtain patents
for all such inventions and improvements, the said inven¬
tions and improvements to bo the joint property of the said
Harrington and myself, and tho patents to bo issued to tho
said Harrington and myself, in the proportionate interest
of two thirds to said Harrington and one third to myself;
tho wholo to bo under tho sole control of said Harrington,
to bo disposed of by him for our mutual benefit in tho pro¬
portions heroin before recited, in such manner and to such
extent ns he, tho said Harrington, should deem advisable,
with power to sell, transfer and convey the wholo or any
part of tho rights and titles in and to any or all of said in¬
ventions and improvements, ns also of tho patent or other
ri'dits arising therefrom. And tho said Harrington having
faithfully fulfilled all of the covenants and stipulations
entered by him ; _
Now, therefore, bo it known that, in consideration
; thereof, and of tho sum of olio dollar to mo in hand paid, I,
1 Thomas A. Edison, of tho City of Newark, Suite of Now
; Jersey, do, by these presents, hereby assign, set over and
convoy to him, tho raid Harrington, two thirds in interest
of all my said inventions, including therein all my inven¬
tions of mechanical or copying printers, and of all ..the
.patents for all such inventions and printers, whether
already issued, applied for, or to bo hereafter applied for,
and of all and whatsoever of my inventions and improve-
I meats made or to bo made, and of all the patents that may
bo issued therefor, that are or may bo applicable to auto¬
matic telegraphy or mechanical printers.
And whereas I am desirous of obtaining |tho cooperation
and assistance of the said Georgo Harrington in disposing
EXHIBIT 2.
88 I
340 of my said one third interest, ns boforo recited, mid for the |
purpose of united and harmonious action in negotiating for |
its use or its sale and transfer by or toothers in conjunction I
with his own, and in such free and unrestricted manner ns 1
will tend to success, and for the sum of one dollar to me in f|
hand paid, the receipt whereof is hereby acknowledged; ! j
Now, therefore, be it known that I, Thomas A. Edison, J
of the City of Newark, State of New Jersey, have constituted I
and appointed, and by those presents do constitute and np- I
point George Harrington, of the City of 'Washington, a
847 District of Columbia, my true and lawful and pnly attor- li
noy, irrevocable, with power to substitute for me and in I
my name, and in such mnnncr ns ho may think best, to ;
sell, transfer, and convoy all of my rights, titles, and in- j'
lerest in and to any and all of my said inventions, and the >;
improvements thereto, whether made or to bo made, audio
sell, transfer and convey all of my rights, by patent or
otherwise, arising therefrom, already made and obtained,
and all such ns may horonfter bo made or obtained, and to 4
execute in full any or all the necessary papers and docti- f
848 ments requisite for the transfer of title, and to invest in i
other parlies full and legal ownership therein, hereby I
divesting myself of and investing him, the said Harring- f
ton, with all the powers necessary in the premises, fully ;
and completely, to carry out tlio purposes and intentions
heroin set forth, hereby fully confirming all that my said f
attorney may or shall do in the promises as fully as if (lotto I;
by mo in person, and requesting the Commissioner of
Patents to rccognizo him ns such attorney.
In -witness whorcof, I have horcunto set my hand and
849 affixed my seal, in the City "of Newark, this -Itld'duy of
April, 1871.
T. A. EDISON. [!„*] '
In prcsonco of—
A. D. Conuiur, ] 1
A. B. Oandee. 1
Beeorded Mny 6th, 1871, Liber U 13, p. 412, Transfers
[Copy.]
New York, Deo’r 80, '7-4.
It is heroby understood that the undersigned will heart¬
ily cooperate in concluding an alliance between the A. &
P. Tel. Co. and the Automatic System, on the geueral
basis following:
A. k P. to increase her capital to $15,000,000
Automatic interests to rcceivo 4,000,000
To remain in Treasury, 1,000,000
The 14,000 Shares A. k P. now in tbo Co.’s Treasury
to be distributed to the A. & P. Stockholders ns n dividend.
Automatic System covering Patents, Contracts, etc., etc., to
bo turned over to A. k P. Tel. Co. Management to bo 852
mutual and subject approval of Mr. Jay Gould k Col.
Tlios. A. Scott.
Gcn’I T. T. Eckert to bo President.
T. A. Edison to bo Electrician.
D. H. Crnig to organize the news Doplmt
The Automatic are to conclude the ponding Contracts
with Erie, P. 11. I?, and B. k 0. &-turn them over to A.
k P. The A. k P. Tel. Co. to assume the liabilities under
said contracts. Automatic to ltavo representation on Ex- 853
ccutive Committee.
Jay Gould. Josiah C. Eeiff. Jno. McManus.
12*
364 L'ber H“ p. 138. I
Whereas Letters Patent of the United States have been I
duly granted for inventions of Thomas A. Edison, of Notv- I
arl;, N. J-, as follows: [:
No. 121,601, dated Dec. 6, 1871, for an Apparatus for ji
Perforatin'; Paper Tor Tclcgrapbio purposes. j
No. 123,084, dated February 27th, 1872, for 1 olograph I
Apparatus. B
355 No. 12-1,800, dated March 22d, 1S72, for a 1 cleg rapine
Uncording Instrument. |
No. 138,841, dated Deo. 10th, 1872, for a Typo Writing j
Machine. _ , is
No. 182,456, dated October 22d, 1872, for Apparatus for ...
for Perforating Paper for Telegraph use.
No. 132,455, dated October 22d, 1872, for Paper for .
Olicmieal Telegraphs. _ f!
No. 133,010, doted November 12th, 1872, for an Elec- /
trioul Printing Machine. |
350 No. 134, 807, dated Jnnuary 14th, 1878, for Improve- 1
menti in Chemical Telegraphs. t
No. 184,808, dated January 14th, 1878, for Electro- [
Magnetic Adjuster.
No. 141,772, dated August 12th, 1878, for Telegraphic
Circuits. , . I
No. 185,581, dated February 4th, 1878, for lolograplito v
Oil'0Ui,S' ... , I \6 i
No. 141,770, dated August 12, 1878, for lelegraplu ;
857 ° No!'' 160,848, dated May 12, 1874, for Telegraphic
Circuits. .
No. 141,778, dated August 12, 1878, for Circuits for
Chemical Telegraphs.
No. 141,775, dated August 12, 1878, for Apparatus to
Perforating Paper. .
No. 141,774, dated August 12, 1873, for Improvement
in Chemical Telegraphs. ,
No. 141,777, dated- August 12, 1573, for 'I clogrnpn
Instruments.
No. 150,847, dated May 12, 1874, for Deceiving lustra- 35S
ment for Chemical Telegraphs.
No. 147,812, dated Feby. 10, 1874, for Apparatus for
Perforating Paper.
No. 147,314, dated Feby. 10, 1874, for Circuits for
Chemical Telegraphs.
No. 147,818, tinted Feby. 10, 1874, for Improvement in
Chemical Telegraphs.
No. 147,811, dated Feby. 10, 1874, for Improvements in
Chemical Telogrnphs,
No. 151,209, dated May 26, 1874, for Automatic Tele- 359
graphs. \\
No. 150, 848, dated Novotnbor 17, 1874, for Duplex j j
Chemical Telegraphs. '
No. 100,402, dated March 2, 1875, for Solutions for
Chomienl Telegraph Paper.
No. 100,408, dated March 2, 1875, for Solutions for
Chemical Tolegrnph Paper.
No. 100,404, dated March 2, 1876, for Solutions for
Chemical Telegraph Paper.
No. 160,405, dated March 2, 1875, for Adjusting Electro- 360
Maguets for Delays.
And the said Thomas A. Edison has mado application
for Letters Patent ns follows :
Solutions for Chemical Pnpor filod Juno 4, 1874, and
allowed September 14, 1874.
Improvements in Chomienl Telegraphs dated Juno 1,
1874, and filed Julv 26, 1874, being Application Numbor
88.
Improvements in Chomienl Tolographs dated Juno 1, 361
1874, and (Hod July 25, 1874. Application No. 89.
Improvements in Chemical Telegraphs dated Juno 1,
1874, and filed July 25, 1874. Application No. 90.
Improvement V 0 i
7, 1874, and filed January 16,
Improvements in Automata
1875, and filed Jan. 27, 1875.
Improvements in Automnti
ic Telegraphs dated August
1876. Application No. 92.
ic Telegraphs dated Jan. 18,
Application No. 103.
ic Telegraphs dated August
7, 1874, and filed Jan. 15, 1875. Application No. 98.
032 Solutions for Chemical Paper dated August 14, 1874, |
and filed Jan. 16, 1876, being Application No. 102. I
Automatic Telegraph Instrument dnted Jan. 18, 1876, I
and filed Jan. 20, 1876. Application No. 104. I
llccording Points .for Telegraphs dated Jan. 18, 1876, f
and filed Jan. 20, 1876. Application No. 106. jf
Preparing Cliomic.il Paper, dated Jan. 18, 1876, and
filed Jail. 20, 1875. Application No. 100. g
Automatic Telegraphs dated Jan. 19, 1875, and filed g
Jan. 27, 1876. Application No. 107. |j';
ggg Automatic l’clograplis dnted Jan. 18, 1876, mid filed j
Jan. 20, 1876. Application No. 108. p
Improvements in Telegraphic Apparatus dated Feb. 11, j /;
1875, llled Fob. 10, 1876. Application No. 110. p
And whereas tho entiro rights in and to the said invon- j .
tions and tho Letters Patent that, are or may bo granted ' ,
thorefor, are now hold by virtue of assignments duly re- ;
corded in tho Unitod States Patent Ollico by mo, George .
Harrington, of Washington, D. O., and tho said Tliomai
A. Edison, in tho proportion of two thirds by mo and one
864 'third by tho said Edison.
And whereas Jay Gould, of tho City and State of Neir
York, is desirous of acquiring our entiro rights in the said
inventions and Letters Patout.
And whoroas tho said Edison has duly appointed me,
the said Harrington, his true mid lawful attoruoy in rola- j
lion to his invoutions and patents ;
385 Now this indonturo wituessoth, that for and in con¬
sideration of tho sum of one dollar to mo paid, the
receipt of which is hereby acknowledged, I, tho said George
Harrington, for myself individually, and as uttornoy for the
Bnid Thomas A. Edison, have sold and assigned, and do by I
these presents assign, transfer, set over and convey unto
the said Jay Gould the entire right, titlo and interest o(
every character into, under and connected with the said in¬
ventions, and the Letters Patent that linvo been or may
. bo granted therefor, for tho uso and behoof of the
snid Jay Gould or his legal representatives, ns fully and 866
entirely ns the same would liavo been held by myself or
tho said Edison, lmd this assignment and sale not been
In witness whereof, I, tho snid George Harrington, liavo
hereunto set my hand and seal this ninth day of April,
A. D. 1875.
GEO. HAIU1INGTON, [seal.]
for self and as tho duly con-
Recorded stitutod Attorney of Thomas 307
May 7, 1876. A. Edison. [seal,]
Witnesses.
C. B. Harrington.
James Hohton. -
EXHIBIT 4.
In consideration of one dollar to mo paid, tho rceoipt of
which is hereby acknowledged, I, Thomas A. Edison, do
licroby approve, ratify and eon linn tho above trnnsfor from
Gcorgo Harrington to Jay Gould, so far as relates to my 868
rights ill the snid inventions and Letters Patent. .
As witness my hand nud seal this fifteenth day of April,
1875.
THOS. A. EDISON, [seal,]
Witness.
E, J. Kilbouhne.
'C. B. Harrington. -
New York, April 18, 1875.
[Copy.]
Sir:
I hand you herewith a specific assignment of each and
every patent and application for patents, covering all of
T. A. Edison’s inventions for automatic telegraphy, and
whereby tho full and complete titlo invests.
Tho consideration to bo paid therefor is thirty-one tlious-
94
870 nnd eight hundred shares of the stook of tho Atlantic &
Pacific Telegraph Company.
I will thank you to withhold tho within assignment
until the Atlantic & Pacific Telegraph Company shall de¬
liver to yon the said shares of their stock, when tho assign¬
ment will bo delivered to thorn.
These shares you please hold subject to delivery to the
following named parties:
John McManus . Heading, Pa . 43 shares.
Seyfert, McManus <k Co., Phila . 4,093 do.
871 Wm. M. Soy fort . Phila . 320 do,
Wm. J. Palmer . Colorado . 540 do.
John Elliot . Higgs k Co., N. Y.. 200 do.
H. C. Dnllott, Jr. . Phila . 60 do,
E. Corning . Albany . 80 do.
James Dnllott, Trustee. ..Phila . 120 do.
Alex. Morton . N. Y., 80 Broadway. -10 do.
J. J. Marsh . Haverhill, Mass... 60 do.
Sam’l 15. Parsons . Flushing. . 500 do.
J. C. lieiir . Now York . 7,057 do.
872 A. & P. Telegraph Co . 1,400 do.
T. A. Edison . 8,000 do.
J. C. Hcifi; Scc’y . 1,428 do.
Geo. Harrington . 12,254 do.
81,800 do.
Tho receipts of said parties shall bo your full acquit-
Very respectfully,
GEO. HAKHINGTON. ^
873 Jay Gould, Esq.
Of tho above sums there is tho amount of $-10,000
(about) currency, or about 1,600 shares (a little less) to bo
deducted from the account of J. C. llcilf, nnd redistributed
to J. C. Hcifi', Geo. Harrington, S. B. Parsons, Wm. J-
Palmer, Edison and McManus. This redistribution, as it
shall be agreed to, will be handed to you in the torn! of a
paper signed by Heill', Parsons nnd Palmer, and should bo
approved by Edison.
With such paper please deduct and add to respectively, 874
ns that papor will show.
New York, April 16, ’75.
I, Thomas A. Edison, owner of one third of my several
inventions for automatic telegraphy, sold with my consent
and approval to Mr. Jay Gould, do horeby make an allow¬
ance to Geo. Harrington and J. C. Heill', from my 1/8
share of tho proceeds obtained for said patents, for their
time, trouble nnd services in connection with said inven¬
tions, nnd authorise such further deductions from my shnro
ns, with tho 2/8 controlled by Mr. Harrington, shall 875
bo required to roimbttrso tho several parties by whom
money may have boon advanced for automatic purposes,
upon tho basis of four in A. k P. stock to one of cash ; that
is to say, in the several nmounts ns herein sot forth.
THOS. A. EDISON.
EXHIBIT 6.
Whereas tho Directors of tho Automatic Telegraph Com¬
pany, at n meeting specially convened for the purpose, nnd 373
held on tho 8th of April, A. D. 1875, at which more than
three fifths of tho whole Board wore present, unanimously
authorized and approved tho sale and transfer to tho At¬
lantic & Pacific Telegraph Company of all the rights, titles
nnd interests of tho said Automatic Telegraph Company in
and to tho telegraph lino running from Now York to
Washington, Dist. of Columbin, including cables and all
other property attaching thereto, obtained or acquired, or
to bo obtained or acquired by virtuo of a contract or agree¬
ment between the National Telegraph Company and tho 377
Automatic Telegraph Co., both of wliioh bear date tho 18th
of Jnnuary, A. D. 1871, and copies thereof are herewith.
And whereas the said Board of Directors at tho said speeinl
meeting unanimously authorized and approved tho sale and
transfer to tho said Atlantic & Pacific Telegraph Co. of nil
the rights, titles nnd interest of tho Automntio Telegraph
Co. in and to the Littlo system of telegraphing, and in and
to tho various patents, devices nnd inventions of said
Georgo Little, in relation to or in connection with said sys-
378 tom, acquired nnd obtained or to bo acquired or obtained B
under nnd by virtue of certain contracts mndo nnd entered if
into by nnd between Daniel H. Craig and George Littlo oi 9
the one part, and tlio National Telegraph Company of the R
other part, bearing date- the ninth day of September, A. D. [I
1S89, and supplements thereto, dated respectively the 10th I sj
January, 1870, 25tli of April, 1870, and 81st of Jlay, 1870, :ft
nnd the transfer to and assumption by the said Automatic fc
'Telegraph Company of said contracts and supplements, tu ft;
shown by a certain contract or agreement between said [ sj
379 National Telegraph Company nnd Automatie Telegraph ||
Company, bearing date the 18th of January, A. D. 1871, ? !
nnd found herewith ; nnd also by a further contract embrac- P;
ing an exclusive license to use said system under royalty, j, •
bearing dnto the Otb May, A. D. 1872, also to bo found T
herewith; nnd whereas .more than three fifths in interests f
of the stockholders of tho said Automatic Telegraph Coni' L
pnny, at a meeting hold on the 8th April, A. D. 1875, f
specially convened for the purpose, unanimously approved
such, and confirmed such sale nnd transfer;
880 ■No"’i therefore, in obedience to tho instructions of the
Board or Directors of tho Automatic Telegraph Company,
ratified and confirmed by tho stockholders, and with the
approval of the Executive Committee of said company, ;
nnd for and in consideration of the sum of eight hundred [i
nnd twenty thousand dollars, payable in eight thousand two ‘ ;
two hundred shares of the fully paid up stock of tho At- g
lantio nud Pacific Telegraph Company, j
I, George Harrington, President, do hereby sell, assign, I
transfer and set over unto the Atlantic nnd Pacific Tele- t
881 6r“l>h Company the hereinbefore recited contract or agree- 1
ment of tho 18th of January, A. D. 1871, with the Na- j
tioual Telegraph Company, and all the right, title and K
interest of the Automatic Telegraph Company thereby orbs
in any other manner obtained or acquired in or to the tele- 1;
graph line running from Now York to ■Washington, D. C., |
cables and all other property connected therewith, as also
all the right, title and interest of said Automatic Telegraph
Co., in and to the Littlo system of telegraphing, nud in and
to tho several patents nnd devices of George Little, obtained
and acquired, or to be obtained and acquired under nnd by 882
virtue of tho herein recited contract or agreement of 18th
of January, 1871, with tho National Company, and the
contract and exclusive licenso with Gcorgo Little of 6th
May, 1872, as well ns all claims therefor by virtue of any
moneys paid for patents for said systom and development
thereof. To have and to hold, they, their successors and
assigns forevor; provided, nevertheless, that before the
payment or delivery of stock herein provided, tho said
Atlantic nnd Pncifie Telegraph Co. shall bo entitled to ggg
demand aud recoivo from tho National Telegraph Company
the full nnd legal titlo to tho telegraph line, and tho transfer
of tho contract nnd licenso for the Little system, ns set
forth in tho agreements of 18th January, 1871, herewith;
Also from
Georgo Little, a full nnd specific legal assignment of
each nnd every United States Patent and bis several im¬
provements and devices for Automatie Telegraphy. Also
D. H. Craig, a full and legal assignment from himself
or his assigns of all interests and claims in nnd upon the 884
Littlo system and other devices for Automatic Telegraphy ;
Also from
Marshall Lcftcrts or his assigns, of all his claims upon tho
Little system, and all the patents for drop copies nud other
devices for or connected with automatic telegraphy now or
heretofore owned by said Lcllcrts. Also from
Frauk Anderson, of Peckskill, of all his patents and
inventions for or connected with telegraphy. Also from
F. J. and George Grnec, of all their joint nnd several
clnims and dovices for fast telegraphy. 885
In witness whereof, otc., this tenth day of April,
1876.
(Signed,)
GEORGE HARRINGTON,
President Automatic TeL Co.
Witness: J. C. Eeiff, Sx'ij.
13*
I hand you herewith deed of Transfer to the Atlantic \
and Pacific Telegraph Company of all the rights, titlo and
interest of this company in and to the line of telegraph
reaching from Now York to Washington, D. C., and of all
the rights, titlo and interest of this company in and to the
887 pntents and devices of Goo. Little, comprising the Little
system of telegraphy.
The consideration to bo paid for a full and complete titlo
to said lino and system, as set forth, is eight thousand two
hundred shares of tho stock of tho Atlantic and Pacific
Telegraph Company.
You will please hold said Deed, and, on completion of tho
titles by tho sevoral parties named therein, deliver tho same
to the Atlantic and Pacific Telegraph Company, receive the
Stock, and pay over or deliver to such parties respectively
388 the said shares as follows:
(5,000) Five Thousand Shares.
(1,000) Ono Thousand do.
To tho National Telegraph
Co.,
To George Little,
To D. II. Craig for himself, "
Lefi'orts, assignee,
F. Anderson,
J. F. & Geo. Grneo,
and, for such payment and delivery, this shall bo your
) authority and acquittance.
GEO. HARRINGTON,
President Automatic Tel Co.
EXHIBIT 8. 3
Liber D 10
Page 150.
Whoroas. by an indenture bearing dato tho first of Oc¬
tober, A. D. 1870, Thomas A. Edison, of the City of New¬
ark, State of New Jersey, and Georgo Harrington, of tho
City of Washington, District of Columbia, became copart¬
ners and joint owners as manufacturers and inventors, for
a period of livo years ; and whereas tho fifth section of
said indenture provides that tho said Edison “shall admit
no other parties to any direct or iudircot interest in, or to 8
any inventions or improvements mado or to bo made by
him," except as thereinafter set forth, but all such shall
inure and belong to said Harrington and Edison in tho
proportions as set forth in section sixth of said indenture.
And whoroas tho sixth section of said indenture pro¬
vides that tho proportions referred to in section fifth shall
he one third to said Edison and two thirds to said Harring¬
ton, all of whioh will moro fully appoar by roforonco to
said indenture, a copy of which is horoto attached. And
whereas in furthoranco of tho provisions of said iuden 3
tare, and tho purposes of said copartnership, tho said
Thomas A. Edison, by an instrument in writing boaring
date the fourth day of April, A. D. 1871, duly recorded in
the U. S. Patent Ofiieo tho 0th May, 1871, in Libor IJ 10,
page -112 of transfers of Patents, to whioh roforonoo is
made, duly sots forth tho fact of said joint ownership in his
inventions, in tho proportions of one third to said Edisou .
and two thirds to said Harrington, and did thoroin formal- j
ly assign nnd set over to said Harrington an undivided |
two thirds of all of his inventions mado or to bo mado, 3
and then nnd thoroin constitute nnd nppoint the said Georgo
Harrington his true, lawful nnd only attorney irrovoenble,
with power to substitute, for him and in his name and in
such manner as tho said Harrington may think host, to
sell . transfer and convoy all his rights, titles nnd
interest in and to all of his said inventions and tho im¬
provement thereto, whether mado or to bo mado, nnd to
sell, transfer and convoy all bis rights by patent or other¬
wise arising therefrom already mado and obtained, and all
100
101
894 such as may hereafter he mndo or obtained, and to execute y
in full any and all the necessary papers and document! I
requisite for the transfer of title * *, etc., as is more fully ■
set forth in snid instrument of writing. I.
And whereas, during tho period of snid copartnership V
and joint ownership, tho said Edison matlo certain inven- 'i;
tions for Duplex and Quadruplex transmission of intclli- k
goneo at the snmo time upon one and the same wire, known |
ns Quadruplex telegraph, for which applications for patent! ft
have been made and nro to bo made.
895 And whereas I, tbo said Georgo Harrington, in tho ex- |
orciso of my best judgment, anil in furtherance of wliatl
deem tho best interests of tho said Edison ns well ns my- j’i
self, having determined to dispose of the said Duplex and '
Quadruplex inventions of said Edison ; ||
Now, therefore, bo it known that for and in considcn- ||
tion of tho sum of ono dollar, and of further valuable and j
valid considerations to mo in hand paid, tho receipt where- |
of is hereby acknowledged, I, tho said George Harrington, j
of tho City of Washington, District of Columbia, have I
898 granted, bargained and sold, and by these presents do here- 1
by grant, bargain, sell, assign, transfer and convoy unto
Jay Gould, of tho City of Now York, State of New York,
his executors, administrators and assigns, the said inven- 1 :
tions of said Edison, known ns Duplox and Quadruplex h!
telegraphs, togethor with all the rights, title and interest!
therein and thoroto of tho snid Thomas A. Edison ns the U
inventor thorcof, and all the rights, title and interest of the |
said Thomas A. Edison and of the snid George Harrington, |
as tho assignees of said Edison, or either of them, and all |
897 tho right, titlu mid interest which they, or either of them, V
now have or may hereafter acquire in or to any Letters I
Patent issued or allowed, or that may hereafter be issued I
or allowed for any such inventions, whether made or to he J
made, ns well as to all improvements that may hereafter he |
made, and in and to any reissues or extensions of the same |
or any of them, that in any manner relate to Duplox and 1
Quadruplex telegraphy ; to hnvo and to hold for himsolf, |
his executors, administrators and assigns, for his and their |
own use and behoof, to tho full end of tho term, as well as I
(the renewals or extension thereof, for which Letters Patents 898
hnvo boon or may herenftor bo granted, as fully and ontirely
as tho snmo would hnvo been or could bo hold and onjoyod
by said Edison or snid Harrington, or either of thorn, had
this assignment, sale and transfer not boon made.
<1 And I, tho said Georgo Harrington, noting for himself,
/| and as tho lawfully constituted attorney of said Thomas
|| A. Edison, do hereby authorize and empower the said Jay
p Gould, his administrators and assigns, ns a vested right
:| conferred hereby, to call upon snid Edison for all necessary
I specifications, drawings, models, and whatsoever may be 399
i necessary to obtain United States Pntcnts for any of snid
4 inventions and improvements, whether mndo or to bo made,
B and for all such further assignments ns may bo necessary
or requisite to vest in tho said Jay Gould, his oxccutors,
administrators or assigns, full nnd comploto titlo to all
such inventions nnd improvements, heroby substituting and
appointing tho snid Jay Gould, or such other person ns I10
may indiento, my true, lawlbl nnd only nttornoy, irrevoca¬
ble, with power to substitute, ns I am authorized to do in
tho instrument of writing of April 4th, A. D. 1871, before 499
recited, divosting myself nnd investing him, tho said Jay
Gould, in all that relates nnd applies to Duplox nnd Quad-
1. ruplox tolcgrnphs, and no more, with all tlio power in tho
|| premises, ns if oxeroisod by mo in person, and requesting
|| tho Commissioner of Patents to recognize him ns tho duly
S constituted nttornoy of snid Edison and Harrington in all
■unitors and inventions rolating to Duplox and Qundruplox
telegraphy. Provided, novertholoss, that it is distinctly
understood, agreed and stipulated that this disposition, sale
and assignment of Duplex nnd Qundruplox telegraphy, nnd 494
this deed of conveyance and transfer does not nnd shall
I not bo construed to includo any inventions heretofore mndo,
I nor any patents heretofore issued or allowed, nor any futuro
| improvements thcroof or thereto for Duplox telegraphy in
connection with Chomicnl telegraphy, but all such remain
as tho property of snid Harrington and Edison, and under
tho solo control of snid Hnrringlon, tho samo ns if this
salo, assignment and deed of transfer had not boon mado
or executed.
402
In witness wlicroof, I, tho said Gcorgo Harrington, lot i and grant to Jay Gould, of tho city, county, and State of 406
myself and as tho duly constituted attorney of Thomas A H Hew York, full and irrevocable power and authority t<
In presence of ]
Wm. P. Cox,
D. Dohsky. J
Edison, have hereunto set my hand and seal, in tho City of j
Baltimore, Stato of Maryland, this first day of Jammy,
A. D. 1S76. I
, GEOHGK HARRINGTON, [seal]
> for myself and as tlio duly
1 constituted ntt'y of Tins, j
A. Edison. [seal]
Memo. Where “ Qundruplcx " is nlono inontioned i
408 tho foregoing paper, it was intondod to bo preceded by tin]
words “ Duplex and ” where theso liave boon accidentally
omitted.
Beeordod GEO. HARRINGTON, [seal]
March 81, 1876. for myself and as the duly con¬
stituted attorney for Thos. A.
' Edison. [seal]
EXHIBIT No. 0.
Know all men by theso presents, that whereas T, Tliomu
A. Edison, of Newark, in the Stato of Now Jersey, have
invontod certain improvements in duplex telegraphs, for
which I have oxccutcd, and am about to execute applica¬
tions for lottors patent of the United States, and such appli¬
cations are numbered 04, 95, 96, 97, 98, 99 and 100, anil
are dated August 19, 1874.
And whereas I have invented other improvement!]
in duplex telegraphs, tho descriptions and models of
have been lodged with L. W. Scrrcll, of the city, county amlW|
405 Stale of New York, for tho purpose of obtaining patents. £
And whereas I am the inventor of othor improvemen
relating to duplex as well ns qundruplex telegraphs, to 1
both of which I am about to make application for letten
patent;
Now, in consideration of ono dollar to me in hand pai<h
the receipt of which, as well as other good and valuable
considerations, I do hereby acknowledge, I do hereby give
j sell, assign, transfer, mid sot over unto nny person, persons
corporation any right, title, and interest in or to nny or
all of said inventions or improvements relating thereto, or
, to, or under any letters patent which may be granted to,
at any time may belong to uic, relating to any or all
said inventions or improvements ; und I do hereby also
give and grant to said Jny Gould full and irrevocable
power and authority to give or grant any license or licouses
in, to, or under any or all of saiil letters patent, or in or re- 407
[Ijluting to any or all of said inventions or improvements.
And I do hereby also give and grant unto said Jay Gould
full and irrevocable power and authority to do and per¬
forin all necessary nets in and about tho manngomont of my
[j| interest in said invention or improvements and letters pat-
ind each of them, and in or relating to any business
may arise thereunder, hereby authorizing and ompow-
him to make and meet business engagements and lia- .
hi lilies, and to do and perform each and every not which Ii
my executors, administrators or assigns might or could 408
in relation to the management of all business transac¬
tions relating to said inventions, improvements or loiters
itcnt, or any of thorn.
And I hereby authorize and empower tho said Gould
to demand, sue for, collect, receive, and give acquittance
and releases, in my natno or otherwise, for all sums of
money, debts and demands whatsoever, which nro or shall be
due, owing, or belonging to me, or detained from mo by
y person or persons whomsoever ; and also at nny time to
nnietice and prosccuto nny and all suits or actions at law 409
equity, in my name, for the infringement of said letters
patent ; nnd nlso to sign my name to nny and all papers
necessary for commencing nnd carrying on said suits or
actions, nnd ho shnll have (rower full and irrevocable, in my
nnino, to do and perform evory not necessary nnd proper in
and about said suits and actions.
I do also heroby also authorize and empowor tho said
Jay Gould to appoint any substitute or substitucB, at his
discretion, to do nnd perform all or any of tho acts hereby
104
410 authorized, and I do in such caso hereby confer upon such
substitute or substitutes each and all of tho powers which
I have hereby conferred upon said Jay Gould, or which
may by him bo delegated to such substitute or substitutes.
In witness whereof, I have hereunto set my hand and
seal this fourth day of January, one thousand eight hun¬
dred and sovonty-fivo.
THOMAS A. EDISON, [seal.]
In prcscnco of—
[Tho words “ full” and “irrevocable" interlined between I
41X tho 2d and 3d, the 14th and 15th, and 21st and 22d lines
of tho 2d pago, and between the 2d and 8d lines of tho 4th j
page, beforo execution.]
Olin J. Clausen.
Aiitiiuii Kinkier |
State of New York, 1 !
City and County of New York, J B3' j
On this fourth day of January, 1876, before mo person¬
ally camo Thomas A. Edison, to mo known, null known to
412 bo tho individual dosoribed in and who executed tho fore¬
going instrument, and acknowledged that ho executed the
same for tho purpose therein mentioned.
[seal.] ' OLIN J. CLAUSEN,
Notary Public , jY. Y. £5t[ j
EXHIBIT No. 10.
[Y 18, p. 848.]
Know all men by theso presents, that whereas i,
418 ®I0mns Edison, of Newark, in the State of Now Jer¬
sey, have invented certain improvements in Duplex Tele¬
graphs, for which I havo executed or am about to execute
applications for Letters Patent of tho United States, and
such applications are numbered 04, 06, 06, 07, 98, 09 and
100, and are dated August 10, 1874.
And whereas I hnve invented other improvements in
Duplex Telegraphs, the descriptions and models of which
havo been lodged with L. W. Scrroll, of the city, county
and Stato of Now York, for tho purposo of obtaining .
patents. 4
And whereas I am tho inventor of other improvements
relating to Duplex ns well as Qundruplox Telegraphs, for
both of which I am about to make applications for Letters
patent.
And whereas Samuel M. Mills, of tho City of Brooklyn,
in tho Stato of Now York, is desirous of purchasing from
me all tho right, title and interest which I havo in or to
the said inventions, or which I may hereafter havo in and
to other inventions relating in any manner to Duplex and
Qundruplox Telegraphs, in consequence of tho grant of Let- 4'
tors Patent therefor, or of any inventions or improvomonts
relating thereto, or hereafter to bo made by me, or in which
I may horonftor havo any interest whntcvcr ;
Now I, tho said Thomas A. Edison, in consideration of
tho sum of thirty thousand dollars to mo in hand paid, tho
receipt of which I hereby duly acknowledge, havo sold,
assigned, transferred and set over, and by those presents do
sell, assign, transfer and sot over unto tho said Samuel M.
Mills, his executors, administrators and assigns, all tho
right, title and interest which I havo in and to all tho said 41
inventions or improvements, and in and to all other inven¬
tions and improvements relating in any way either to Du-
plex or Qundruplox Telegraphs, and all right, title or inter¬
est I may now or may hereafter havo in or to any Letters
Pntcut for tuiy such inventions or improvements, and in or
to any reissues or extensions of tho samo or any of them.
To have and to hold the samo to the said Samuel M. Mills,
his executors, administrators and assigns, for his and their
own use and behoof, to tho full end of tho torm, ns well ns
renewals thoreof, for which tho said Letters Palont havo 41
been, or may hereafter bo grnntod, ns fully and entirely as
the same would have been held and enjoyed, or could bo
held and enjoyed by mo had this assignment and sale not
been made ; and I hereby request the Commissioner of Pat¬
ents to issuo to the said Sntnuel if. Mills, ns my assignee,
Letters Patent for all my right, title and interest in and to
the said inventions or improvements, for tho solo use and
behoof of himself and his legal representatives.
106
107
I hereby further covenant and agree that this assign- I
ment shall cover and include all Letters Patent granted, or I
to he granted, in and for foreign countries, ns well ns tlio I
United Slates, and all inventions or improvements which I
may hereafter he made thereon, or relating thereto, as well f
as till extensions and reissues of any such letters Patent in j
the said United States and idl foreign countries. |
And I hereby covenant that I have not umnufacturcil, J
used or sold, or granted licenses or tho right in any way to I
any other party or parties to manufacture, use or sell any
4P9 of tho snid inventions, or any improvements thereof, or any
machine embodying, or article containing any of snid in¬
ventions or improvements.
Anil the said Samuel M. Mills, for himself, his execu¬
tors, administrators and assigns, hereby covennnls ami
agrees that he will from time to lime, as he receives the
same, pay to the said Edison, his executors, ndmunstratois
and assigns, one half of till sums of money which lie may
hereafter realize for tho granting of licenses of tho said i
patents, or the sale of the snid patents outside the jurisdic-
420 lion of the United States.
In witness whereof, I have hereunto set my hand and
seal this sixth day of January, one thousand eight hundred
and seventy-live. i
TIIOS. A. EDISON, |
By Jay Gould, |
In presence of Attorney.
Olin J. Clausen.
State of New Yoke, 1
City ami County of New York , j s'
•121 0" tin3 sixth day of January, 1875, before me personally K
came Jay Gould, the attorney in loot of Thomas A. Edison,
to me known to ho tho individual described in tho lore-
going instrument, and the said Jay Gould, ns such altor- w
ney, executed the foregoing instrument, and acknowledged |J
that ho executed tho same as the net and deed of Thomas |j
A. Edison, therein described, and for the purposes therein g
mentioned, by virtue of a power of attorney duly executed H
by the said Thomas A. Edison to tho snid Jay Gould, bear- H
ing date tho 4th day of January, 1875, and recorded in tho 422
ofQco of tho Commissioner of Patents at Washington, D. C-,
on tho 5th day of January, 1875.
OLIN J. CLAUSEN,
Notary Public,
N. Y. Co.
Becordcd April 10th, 1875.
[Y 18, p. 840.]
Know all Men by these Presents:
That whorcas ono Thomas A. Edison, of Newark, in
the State of Now Jorsoy, has invontod certain improve¬
ments in Duplex Tologrnphs, for which ho heretofore exo- 424
eutod or was about to oxcouto applications for Letters Pat¬
ent of tho United States, suoh applications being numbered
94, 95, 90, 97, 93, 99 and 100, and datod August 19, 1874.
And whereas ho has invontod other improvements in
Duplex Telegraphs, tho descriptions and models of which
have been lodged with L. W. Sorrell, of tho oity, county
and State of Now York, for the purposo of obtaining
pn tents.
And wherons ho is tho inventor of other improvements
relating to Duplex, ns well as Qundruplox Telegraphs, for 426
both of which ho proposod to make application for Loiters
Patent,
And whereas I, Samuel M. Mills, of tho City of Brook¬
lyn, in tho State of New York, did, on tho 0th day of Jan¬
uary, 1875, puro'inso from tho said Edison all his right,
titl i and interest in and to all said inventions and improve¬
ments, and in and t > all other inventions and improvements
relating in any way to Duplox or Qundruplox Telegraphs, ns
f
426 will more fully appear by tlio assignment to mo by tho said
Edison, executed on tlio said sixth day of January, 1876.
And whereas the Atlantic and Pacific Telegraph Coni'
pany has agreed to purchase from me all my said right,
title and interest ; '
Now, I, the said Samuel M. Mills, in consideration of
the sum of thirty thousand dollars to me in hand paid, the
receipt of which I hereby duly acknowledge, have sold, nr
signed, transferred and sot over, and by these presents do
sell, assign, transfer and sot over unto tho said Atlantic
427 n,1(1 Pacific Telegraph Company, its successors and assign* I
•all the right, title and interest which I liavo in and to all '
tho said inventions or improvements, and in and to nil
other inventions and improvements relating in any way
cither to Duplex or Quudruplox Telegraphs, and all right,
title and interest I may now, or I or the said Edison may
hereafter luivc in or to nny Letters Patent for any such in¬
ventions and improvements, and in or to any reissues ores- j
tensions of tho same or nny of them ; to liavo and to hold
the same to tho said Atlantic and Pncifio Telegraph Com-
428 l“»y. its successors and assigns, for its and their own use
and behoof, to tho full end of tho term, ns well as ronmvali
thereof, for which tho said Letters Patent have been or may
hereafter bo. granted, ns fully and entirely ns the same would 1
liavo been held and enjoyed or could. . . .bo. . . .held and
enjoyed by mo had this assignment and sale not been |
And I hereby request tlio Commissioner of Patents to 1
issue to the Atlantic and Pncifio Telegraph Company, as my |
assignee, Loiters Patent for all my right, title and interest [j
42J) in and to the said inventions or improvements, for the sola H
use and behoof of itself, its successors and assigns. U
I hereby further covenant and agreo that this assignment [fj
shall cover and include all Letters Patent granted or to bo |
granted in and for Foreign Countries ns well as the United ||
, tales, and all inventions or improvements which may J
hereafter bo made thcroon or relating thereto, as well as all |j
extensions and reissues of any such Letters Patent in tho 1
said United States and all Foreign Countries. |
And I hereby covcuaut that I havo not manufactured, 1
used or sold, or granted liconses or tho right in any way to 430
any other party or parties to manufacture, use or sell any
of tho said inventions or any improvements thoreof, or any
mnehino embodying or artielo containing nny of said inven¬
tions or improvements.
And I heroby eovonnnt that I have not in nny way con¬
veyed, assigned or encumbered my said interest in any of
said inventions, or in nny Letters Patent to bo issued there¬
for.
And the said Atlnntio and Pacific Telegraph Company, 434
for itself, its successors and assigns, lioroby covenants and
agrees that it will from time to time, ns it reooives tho snmo,
pay to the said Thomas A. Edison, his executors, adminis¬
trators and assigns, one half of nil sums of money which it
may horenftor realize for tho granting of liconses of the said
patents, or the sale of tho said putcnls outside of the juris¬
diction of the United States.
I11 witness whoroof, I liavo hereunto sot my hand and
seal this eleventh day of January, one thousand eight hun¬
dred mid sevonty-fivo. 432
SAMUEL M. MILLS, [seal.]
I11 presoncc of )
Olix J. Clausen, f
State of New York, 1
City and County of New York, f ss‘
Oi\ this eleventh day of January, 1875, boforo mo per¬
sonally came Snmuol M. Mills, to mo known to be tho person
described in and who oxcoutcd tho foregoing instrument, and
acknowledged that I10 executed tho snmo for tho purposes 433
therein mentioned.
OLIN J. CLAUSEN,
Notary Public,
N. Y. Co-
Eceorded Ap’l 10, 1876.
r
1X0
111
431 EXHIBIT 12.
Libor D 1 1
Pago 154.
Whereas, on tho first day of January, one thousand eight
hundred and sovonty-flvo, I, George Harrington, of the Citj
of Washington, District of Columbia, acting for myself, an!
as tho duly constituted attorney of Thomas A. Edison, di!
execute and deliver unto Jay Gould, of tho City, Countyani
435 Stato ot Now York, a certain deed of assignment ; an!
whereas in said deed, wherever the word “Quadruples’
was written, I intended to precede the samo by tho wonk
“ Duplex and," which said words “ Duplex and " were
accidentally omitted by mo in tho places referred to, and
the real intent and meaning of tho said deed was to con¬
vey all tho right, title and interest of myself and tho said
Thomas A. Edison in, to or in any manner pertaining to
Duplex as well as Qnndrnplox Telegraphs.
And whereas, to provent difliculty hereafter, it is expo
433 diont to correct said omission j Now, therefore, this In¬
denture witnessoth, that I, the said George Harrington,
noting for myself, and as the duly constituted attorney of
Thomas A. Edison, in consideration of tho premises, amid
one dollar to mo in hand paid, by the said Jay Gould, have
granted, bargained and sold, and by these presents do grant,
bargain, sell, assign, transfer and convey unto Jay Gould, d
tho City of Now York, Stato of New York, his executory
administrators and assigns, all the inventions ot said Edison,
known as Duplex and Quadruplex Telegraphs, together with
437 all the rights, titlo and interest therein and thereto of the
said Thomas A. Edison ns tho inventor thereof, and all the
rights, titlo and interest of tho said Thomas A. Edison an!
tho said Gcorgo Harrington ns the assignees of said Edison,
or either of them, and all tho right, titlo and interest which
they or either of them now have or may' horeafter acquire
in or to any letters patent issued or allowed, or that may
horeafter bo issued or allowed for any such inventions
whether mndo or to be made, ns well as to all improvements
that may hereafter bo made, and in or to any reissues or ox- 488
tensions of the samo or any of them thnt in any mnnnor
relato to Duplex and Quadruplex Telegraphy.
To linve and to hold for himself, his Executors, Admin¬
istrators and Assigns, for his and tlicir own use, and behoof
to tho full end of tho term, as well as the renewals or exten¬
sions thereof, for which Letters Patent have been or may
hereafter be granted, as fully and entirely as the samo would
have boon or could bo held and enjoyed by tho said Edison
or said Harrington, or either of them, had this assignment,
sale and transfer not been made. 489
And I, the said George Harrington, noting for myself
and as the lawfully constituted attorney of said Thomas A.
Edison, do hereby authorize and empower the said Jay
Gould, his administrators and assigns, ns a vested right
conferred hereby, to call upon said Edison for nil tho
necessary specifications, drawings, models and whatsoever
may be necessary to obtain United States Patents for any
of said inventions and improvements, whether mndo or to
be made, and for all such further assignments ns may bo
necessary or requisite to vest in tho said Jay Gould, his 440
executors, administrators or assigns, full and complete
title to all such inventions and improvements, hereby
substituting and appointing tho said Jay Gould, or such
other person ns he may indicate, my true, lawful and only
attorney irrevocable, with full power to substitute, ns I am
authorized to do in and by a certain instrument in writing,
bearing dnto April 4th A. D. 1871, and executed and de¬
livered by the said Thomas A. Edison to me, hereby
divesting myself, and investing him, the said Jay Gould, in
all thnt relates and applies to Duplox and Quadruplex 444
Telegraphs, and no more, with all tho power in tho
premises, as if exercised by me in person, and requesting
the Commissioner of Patents to rccognizo him ns the duly
constituted attorney of said Edison and Harrington, 111 all
matters and inventions relating to Duplex mid Quadruplex
Telegraphy. Provided, nevertheless, that it is distinctly
understood, agreed and stipulated thnt this disposition, snlo
and assignment of Duplex and Quadruplex Telegraphy,
and this deed of conveyance and transfor, doc3 not and
'0
112
113
442 shall not bo construed to include any inventions heretofore
made, nor any patents heretofore issued or allowed, nor
any future improvements thereof, or thereto, for Duplci
Telegraphy in connection with Chemical Telegraphy ; hut
all such remain as the property of said Harrington and
Edison, and under the solo control of said Harrington, the jj
samo ns if this sale, assignment and deed of transfer had
not been made or executed.
In witness whereof, I, tho said Gcorgo Harrington,
for myself, and ns the duly constituted attorney of. .
443 Thomas A. Edison, hnvo hereunto sot my hand and seal, in
tho City of Baltimore, State of Mar) land, this ninth day of
March ono thousand eight hundred and seventy-five.
In presence of ) GEO. HARRINGTON, [seal.]
C, B. Hahiiington. > for myself and ns tho duly
Seaton Monhoe. ) constituted attorney of Tlios.
A. Edison. [seal.]
Recorded March 31st, 1875.
EXHIBIT 13.
444 IMor F. 20, page 51.
Whereas George Harrington, noting for himself nndm
the attorney of Thomas A. Edison, made and oxecuted two
certain instruments of writing, bearing date rcspcctiulj
January 1st, 1875, and March Oth, 1875, and recorded in
tho office of tho Commissioner of Patents, March 31st, 1875,
whereby ho assigned, transferred and convoyed unto mo, Jay
Gould, of tho City, County and State of Now York, certain
rights, title and interest which they, tho said Harrington and
445 Edison, might then have, or might thereafter acquire .a
certain patent rights and inventions, ns sot forth therein ;
Now, I, tho said Jny Gould, for and in consideration of
tho sum of ono dollar to mo in hand paid, tho receipt whercoi
is hereby acknowledged, do hereby assign, transfer and set
over unto tho Atlantic and Pacific Telegraph Company, its
successors and assigns, any and all rights, title and interest
in relation to duplex and quadruplox telegraphs which 1, 1)J
virtue of tho said written instruments acquired from the said
Edison and tho said Harrington, as assigneo of tho said
Edison, or either of them, and may now have or hereafter 446
acquire in or to any letters patent issued, or to bo issued,
for any such inventions as are mentioned in the said written
instruments, or for any improvements on tho said inventions,
and in or to any reissues or extensions of tho said letters
patent, or any of them, and also all other rights, title and
interest which I now hnvo undor or by virtue of tho said
written instruments.
And I, tho snid Jay Gould, do hereby give tho said com¬
pany, its successors and assigns, tho samo power to call upon
the said Edison for all the necessary specifications, drawings, 447
models and whatever may bo necessary to obtain United
States patents for any of snid inventions and improvements,
whether made or to be made, and for all such further assign¬
ments ns may bo necessary or requisite for the purposo of
vesting in tho said company, its successors and assigns, full
and complete titlo to all such inventions and improvements
which I could oxcrciso under tho said written instruments,
if those presents had not been made, and I hereby authorize
tho said company to appoint such person ns it may select ns
the attorney for tho said Harrington and Edison, to do all 448
tlioso things and acts which I would bo entitled to do undor
the said written instruments, if theso presents had not been
It is hereby understood and agreed that these presents nro
subject, on tho part of tho said company, its successors and
assigns, to do all tho covenants, conditions and limitations in
the said written instruments contained.
In witness whereof, tho snid Jay Gould lias hereunto set
his hand and seal, and tho snid company 1ms caused tlioso
presents to bo signed by its president, and its corporate seal 449
to bo hereunto affixed, this nineteenth day of July, 1875.
JAY GOULD. [L. s.]
In presence of
tho word "are,” written over
an erasure on tho third line,
second page, beforo execu¬
tion,
Olin J. Clausen.
16*
f p\
f
115
IDctemlant’s Exhibit 37-May 14th, 1877. ^
DeI'AHTMENT op tiie Intemoii, )
United States Patent Office. )
To all to whom these Present shall come, greeting ;
This is to cartify that tlio annexed is a true copy from
tlio records of this office of an assignment recorded in Libor
U. 18, page 412.
In testimony whereof, I, W. II. Doolittle, noting commis¬
sioner of patents, have caused tlio seal of tlio Patent Office
to bo hereunto affixed this fourteenth day of April, in tlio
yoar of our Lord one thousand eight hundred and seventy- ‘la3
I soven, and of tlio Independence of the United States tho
one hundred and first.
[seal.] W. H. DOOLITTLE,
Acting Commissioner.
Whereas, I, Thomas A. Edison, of tho Oily
Libor u. 13, p. 413. of Nawarki StaUj of N-ew Jersey, for cortnin
valid and valuable considerations to mo in hand paid, and
in further consideration of certain covenants and stipula¬
tions to bo fulfilled by George Harrington, of Washington, 454
District of Columbia, did stipulate and ngreo to invont and
construct, after the said Harrington, full and complotu sots
of implomonts and machinery that should successfully
and economically develop into practical use tho Littlo
or other system of automatic or fast system of tolo-
grnphy, and subsequently to improvo and perfect such
instruments and machinery, by adding thereto from timo
to timo such further inveutions ns experience should de¬
mand, and my ability os an invontor and olootrician might
suggost and permit, and furthermore, to proparo or eauso to 455
be prepared tho necessary descriptive papers, the models
and drawings requisite, and necessary to obtain patents for
all such inventions and improvements. Tho said inven¬
tions and improvements to bo the joint proporty of tho said
Harrington and myself, and tho patents to bo issued to tho
snid Harrington and myself in tho proportionate interest of
two thirds to snid Harrington and one third to myself, tho
456
457
468
wliolo to bo under tho solo control of snid Harrington, to 1»
disposed of by him for our mutual benofit in the propor¬
tions hereinbefore recited, in such manner and to such extent
as ho the said Harrington should deem advisable, with
power to sell, transfer, and convey the whole or any part
of the rights and titles in and to any or all of said inven¬
tions and improvements, ns also of the patents or other
rights arising therefrom, and the snid Harrington lmvmg
faithfully fulfilled all the covenants and stipulations entered
into by him. Now, therefore bo it known, that in considera¬
tion thereof, and of the sum of one dollar to me in hand
paid, I, Thomas A. Edison, of tho City of Newark, State
of Now Jersey, do by these presents hereby assign, ret
ovor and convey to him, tho snid Harrington, two-thirds
in interest of all my said inventions, including therein all
my inventions, mechanical or copying printers, and of all
the patents for all such inventions and printers, whether
already issuod, applied for, or to bo herenflor applied for,
and of all and whatsoever of my inventions and improve¬
ments inndo or to be made, and of all tho patents that may
bo issued therefor, that aro or may bo applicable to auto¬
matic telegraphy or mechanical printers.
And, whereas, I am desirous of obtaining tho cooperation
and assistance of tho said Harrington in disposing of tnj i
said one third interest ns before recited, and for the pur¬
pose of united and harmonious action in negotiating for in
use or its sale or transfer by or to others in conjunction with
his own, and in such free and unrestrioted manner as will
lead to success, and for the sum of one dollar to mo in hand
paid, tho receipt whereof is hereby acknowledged. Now,
therefore bo it known, that I, Thomas A. Edison, of the
City of Newark, State' of New Jersey, have constituted and
appointed, and by these presents do constitute and appoint
George Harrington, of the City of Washington, District oi
Columbia, my truo, lawful, and only attorney, irrevocable,
with power to substitute for me and in my name, and in
such manner as he may think best, to sell, transfer and
oonvcynllof my rights, titles and interest in and to nnj
and all of my said inventions and tho improvements there¬
to, whether made or to bo made, and to sell, transfer and
convoy all of my rights by patent or otherwise arising 4go
therefrom, already made and obtained, nnd all such as may
hereafter bo made or obtained, nnd to exeoute in full any or
•""» — all ncoessnry papers nnd documents requisite
< usiim°iv' ! for the transfer of title, nnd to invest in other
parties full and lcgnl ownership therein ; here¬
by divesting myself of nnd investing him, the said Harring¬
ton, with all tho powers necessary in tho promises, fully nnd
— completely to carry out tho purposes and in.
! tonlions heroin set forth, hereby fully confirm-
ing all that my snid attorney may or shall do 401
in tho promises as fully ns if done by mo in person, nnd re¬
questing tho Commissioner of Patonts to rccognizo him ns
such attorney.
In witness whorcof I lmvo hereunto set my hand and
n (fixed my seal, in tho City of Nownrk, this fourth day of
April, eighteen hundred nnd sevonty-ono.
T. A. EDISON, [seat,.]
May 6, 1871.
In prcsonco of
A. D. Coburn,
A. B. Cancer.
Defendant’s Exhibit 38.— May 14, 1877.
T1IB U. S. PATENT OFFICE.
To all persons to whom these presents shall come, greeting :
This is to certify that tho annexed is a truo copy from
the records or this office of three (8) assignments recorded
in the volumes, ns stilted upon tho margin of each respect- 468
ively.
In testimony whereof, I, Ellis Spear, Acting Commissioner
of Patents, linvo oattsed the seal of tho Patent Office to
be herounto affixed, this twenty-sixth day of January, in
tho year of our lord one thousand, eight hundred nnd
seventy-five, nnd of the indcpundonco of tho United States
'io ninety-ninth.
ELLIS SPEAR,
(seac)
Acting Commissioner.
lions, to bo fulfilled by Ocorge Harrington, 01 \i asmiigio:
District of Coluntbin, did stipulnto and agree to invent am
construct for tho said Harrington full and coiiijdeto scts<
instruments and innoltincry that should successfully an
economically develop into practical use tho Little or otla
system of automatic, or fast system of telegraphy, ami sal
105 scrpiently to improve and perfect such instruments ami m:
chinory, by adding thorcto from timo to time such furtlierii
ventions as experience should demand, and my ability nsa
inventor and electrician might suggest and permit; at
furthermore, to prepare or cause to ho prepared the nccc
snry description papers, the model and drawings requisi
and necessary to obtain patents for all such inventions an
improvements, tho said inventions and improvements to!
tho joint property of tho said Harrington and myself, multi
patents to be issued to the said Harrington and myself
400 the proportionate interest of two thirds to said UnrringK
and one third to myself, the whole to bo under the solooo
trol of said Harrington, to he disposed of by him for o
mutual benefit in the proportions hereinbefore recited,
such manner and to such extent as lie, tho said HarringU
should deem advisable, witli powor to sell, transfer ami c<
vcy the whole or any part of the rights and titles in and
any or all of said inventions and improvements, ns also
the patent or other rights arising thorofrom, and tho s:
Harrington having faithfully fulfilled all of tho covonai
407 and stipulations entered by him ;
Now, therefore, bo it known, that in consideration the
of, and of tho sum of one dollar to mo in hand paid,
Thomas A. Edison, of tho City of Newark, State of N
for, or to be hereafter applied for, and of all and wlint-
ir of my inventions and improvements made, or to be
and of all the patents that may bo issued therefor,
iro or may bo applicable to automatic telegraphy mc-
ul, whereas, lam desirous of obtaining tho cooperation
issistanee of the said Harrington in disposing of my
wo third interest, us before recited, and for tho purpose
tied and harmonious notion in negotiating for its use
i sale and transfer by or to others, in conjunction with
ivn, and in such free and unrestricted manner as will
to success, and for the sum of one dollar to me in band
the receipt whereof is hereby acknowledged ; now,
fore, bo it known, that I, Thomas A. Edison, of tho
of Newark, State of Now Jersey, have constituted and
inlcd, and by those presents do constitute and appoint
go Harrington, of tho City of Washington, District of
inhin, my true, lawful, and only attorney irrevocable,
power to substitute for mo, and in my name, and
lelt manner ns lie may think best, to soil, transfer and
cy all of my rights, titles and interest in and to any
all of my said inventions, and tho improvements
— thereto, whether made or to ho made, and to
*j*' i sell, transfer and convoy all of my rights, by
sri. ' | patent or otherwise, arising therefrom, already
made and obtained, and nil such ns may hero-
bo made or obtained, and to execute, in full, any
II the necessary papers and documents requisite for
transfer of title, and to invest in other putties full
legal ownership therein, hereby divesting myself oi
Investing him, tho said Harrington, with all the powers
sary in tho promises, fully and completely to carry
die purposes and intentions herein set forth, hereby
• confirming all that my said attorney may or shall
i the premises ns fully ns if done by mo in person,
nuTwt and requesting tho Commissioner of Patents to
a.e. j recognize him ns such attorney.
s,1,.1' I In witness whereof, I have hereunto sot
_ “1 my hand, and affixed my seal, in tho City
122
This indenture, made this first dny of October,
V.18, p. 2fl8. one thousand eiglitliuiidrcd and seventy, bv anil
between Thomas A. Edison, of Newark, in the State of Now
‘182 Jersey, of the first part, und Gcorgo Harnng.
1° > ton, of the City of Washington, District ot
_ Columbia, of tho second part :
* Witnessoth— That for and in consideration of ono dollar,
paid in hand ono to tho other, tho receipt whereof is hereby
acknowledged, and or tho mutual trust and confidence
which said parties have in each other, do each coveuautnmi
ngreo with tho other as follows:
tint. — That the said parties ns above named will bo part¬
ners as inventors and ns manufacturers of all kinds of me-
d8S ohinery, instruments, tools, battery materials, anil all an
whatsoever may ho required by the various sy steins o te e
nrnphy and of all such other machinery, instruments, loop,
articles, or things, the manufacture of which may h
oll’ered to or obtained and accepted by thorn, the said p
ties to he interested ns owners in all original inventions nu
improvements invented, purchased or obtained by them o
either of them, and in all the interests and profits arising
therefrom, and iu the profits and losses arising from tho Dim
ness of manufacturing, in tho proportions as hereinafter set 484
forth.
Second. — That tho business of said firm shall bo known
anil conducted under tho name and stylo of
The American Telegraph Works.
Third. _ The place of manufacture shall ho in tho City of
Newark, State of New Jersey, until such time ns it may he
mutually ngrcod to select somo other locality.
Fourth. — The capital of tho firm shall ho nino thousand 435
($0,000) dollars, of whioli the party of tho first part shall
furnish tho sum of throe thousand dollars in tho manner
hereinafter set forth, and tho party of the second part shall
furnish tho sum of six thousand dollars in cash.
Tho capital to bo furnished hy tho party of tho first part
shall consist of tho stook, maohinory, tools and inventions
owned wholly or in part by him, of which an inventory
shall ho mado without reservation, but so much of tho
stock, machinery, tools and fixtures partly owned hy said
party of tho first part, and in part owned hy ono William 486
Ungor, as nro now located and in use at tho former plaoo of
business, tit number 15 Railroad Avenue, Newark, Now
Jersey, shall ho allowed to rotnain tliero for uso by tho
parlies hereto, and tho said William Ungor under tho un-
expirpd partnership ns existing at this dnto hctwcon Edison,
party of tho first part, and tho said William Ungor, but
f: - said shop, machinery, tools and fixtures known
{ as numbor 16 Railroad Avenue, shall not ho
_ H used ns a plaoo of general manufacture upon
orders to tho detriment of tho interests of tho manufactory 487
to ho established and known ns tho “American holograph
Works," under tho auspices of and to ho owned by tho
parties to this indenture, it being understood and stipulated
that tho general manufacture as heretofore carried on is to
he transferred to tho American Telegraph Works, to bo
established under this agreement, and tho transfer of tho
title to the stock, machinery, tools, fixtures and inventions
owned wholly or in part by the party of the first part to
tho parties of tho first aud second part jointly, to bo held
'/
/
124
125
488 by them in tbo proportions respectively, according to tit
amount of capital furnished ns herein stipulated, shall U
taken and received ns full payment of tho proportion ci
capital to bo supplied by tho party of tho first part.
Fifth. — The party of the first part shall give his whole
time and attention, talents and inventivo powers to the
business and interests of tho firm, and shall admit no other
parties to any direct or indirect interest in or to any inven¬
tions or improvements tnndo or to bo mndo by him except
ns hereinafter sot forth, but all such shall inuro and belong!
189 to tho parties of tho first and second parts ns nbovo set
forth in tho proportions ns set forth in scotion sixth of this
indenture; provided, howover, that tho inventions mndo ex¬
clusively for the Gold and Stock Company, which, under s
contract between said party of tho first part and Mr. Marshall
Lofl'erts, are to bo tho solo property of the Gold and Stock
Company, arc not to bo included in this agreement. But
the said Edison or party of the first part binds himself sot
to invent under said contract any machinery that will mili¬
tate against Automatic Telegraphy, nor to sell, transfer or
490 convey to any parties whatever, without tho eonsentof the
party of tho second part hereto, any invention or improve¬
ment that may bo useful or desired in automatic tele¬
graphy ; and provided further, Hint for 'any original inven¬
tions or improvements that the party of the first part may
make other Ilian such ns may bo suggested or nriso from
tho current work in tho manufactory, there shall bo allowed
and paid by the firm to the party of the first part, a reason¬
able and proper compensation therefor according to its
prnotieal value, all things considered, such payment to bo in
491 addition to and irrespective of tho proportionate part of
the profits of the business of tho firm to which the party oi
the first part would be otherwise entitled ; and it is further
agreed that if any disagreement shall nriso as to tho sum
which may bo claimed as reasonable and proper to be paid
for such original invention, the question shall be referred to
an arbitrator, or if preferred by either of the pnrties, to three
disinterested pnrties, one to be chosen by each and a third
by the two thus chosen, and whose decision shall be final
and binding upon both. II
- Sixth, — That all profits arising from tho bu- 492
i | sincss of tho firm and from all inventions and
iiL.~-.wJe, improvements and from tho manufactory shall
ho divided between the parties ns follows: One third thereof
to the party of tho first part and two thirds to tho party of
tho second part, and all taxes, rents, insurance, and other
expenses, and all losses and damages, if any such shall oc¬
cur, shall bo paid from tho general receipts of tho firm,
arising from its business. If theta shall bo insufficient re¬
ceipts, tho deficiency shall bo supplied by tho pnrties hereto
in tho ratio of one third and two thirds, or shall be taken 493
from tho capital of tho company.
Seventh, — Tho pnrties shall be allowed and paid from tho
gross revenues arising from the business a sum equal to fif¬
teen per cent, upon tiio capital per annum, to bo divided
into monthly payments, and a like per contum on moneys
advanced by cilbor pnrty over and above their proportion¬
ate parts of tho capital ns abovo set forth, and all excess of
profits shall remain in the treasury of tho firm, to bo appointed
to the enlargement of tho works and manufactory mid ex¬
tension of tho business, ns may from time to time bo agreed 494
upon otherwise than ns set forth in this section. There shall
bo no moneys or property belonging to tho firm withdrawn,
tnkon or used by either partner, exeopt upon tho written
consent of both partners.
t, - Eighth— Tho pnrty of tho first part shall
| 1 lmvo tho control and direction of tho mnnu-
iiww.~ji factory, mid shall employ mid dismiss all work¬
men ns ho shall deem best for tho interests of tho firm ;
shall purchase, at lowest cash price, without commission, tho
machinery, tools, stock and other necessaries required in tho 495
manufactory, aud generally shall be responsible for the care¬
ful preservation of tho mnohinery and property of tho com¬
pany and tho economical conduct of the manufacturing part
of tho business.
But the manner of keeping tho accounts and books of
the firm and manufactory, and tho employment of porsons
required in keeping such accounts and books, and all that
relates to tho financial allhirs of tho firm and business, and
the disposition of tbo products of tho manufactory, shall bo
126
490 performed or approved, controlled nnd directed at liis optic;
by tlio party of the second part.
Ninth _ There shall be no notes given nor any linbililia
created by any member of the linn without the previoa
assent of both the partners.
Before contracts shall be entered into for the ninmifnctun
of any given number of articles it shall be the duty ot th
party of the first part carefully to ostiniato the tvlion
amount of moneys that will be required to fulfil such con
tracts if made, and the length of time that will be requite!
497 to produce the articles wanted, and such estimate shall h
submitted to the parly of tho second part in order to nscec
tain if the linanoial condition of tho firm is such as to justifj
the outlay, nnd whether when making tho contract
not bo provided in such contract for advances to be malt)
by tho parties for whom tho work is to bo done, in propor¬
tions as tho work progresses, nnd before completion.
Tenth. — Full accounts shall be kept of all business clone
by the firm, nnd all transactions of purchase, manufacture
sales, receipts nnd payments shall bu clearly and fully re
498 corded, together with a detailed account of all expenses i
whatever character incurred, nnd the books nnd account!
^ _ . shall at all times bo open to the inspection ot j
J5 “J either partner.
|s r,{ Eleventh. — Each partner shall give a
o « account of all moneys, property, matter
things that may como into his hands, or to his knowledge
belonging to or concerning, or in any wise all'eeting said
partnership or said business.
Twelfth.— It is further stipulated, agreed nnd understood
499 that thu manufacture of all machinery, instruments, toon
and otlior articles other than so much as may he necessary
to develop inventions and improvements, and make experi¬
ments arising out of or from any inventions and improve
ments heretofore made, or that may hereafter be made, bj
the party of the first part, or orders for machinery and it-
struments or any part thereof that may be obtained bj
either of tho parties hereto, shall bo manufactured, inn <
and filled at once from the manufactory, to he s
ated or established under this copartnership, and at uo other)
place, shop or manufactory without tho consent of all the 500
parties to this indenture.
Thirteenth. — It is further stipulated nnd agreed that tho
party of the second part may, at his own option, admit a
third party into tho firm upon terms of equality with him
and with tho party of tho first part, that is to say, to an equal
third part or interest in all the inventions, stock, machinery,
tools and all other property of tho firm and in the business
,-ith one third share of tho profits nnd losses arising there¬
from and one third benefit, and an assumption of one third
of nil tho liabilities of tho firm. Provided that by tho ad- 601
mission of such third party the interest of said party of tho
first part in tho property and business of tho firm shall not
ho lessoned thereby, nor tho stipulations nnd agreements
nnd provisions of this indenture changed or modified, ex¬
cept in so far as must necessarily follow tho admission of a
third partner, upon an equnl footing in interest, nnd in all
other respects with all tho rights nnd privileges nnd subject
to all the restrictions to bo enjoyed, or ns imposed upon tho
pnrtics to this identuro.
♦r - Fourteenth. — This partnership shall continue 502
j | for a period or term of fivo yenrs from tho
first day of Ootobor. eighteen hundred and
seventy, unless sooner dissolved by mutual consent of all
the parties.
Fifteenth.— AX tho expiration of the partnership or on its
final dissolution, tho property nnd nssots, after pitying all
liabilities of tho firm legitimately created in tho course of
tho business, shall bo divided among' tho respective partners
according to tho respective interests, nnd in case any one of
the pnrlnors shall die before tho expiration of tho partner- 60S
ship, tho surviving partner or partners, if there shall bo
more than one, shall account for, nnd pay over to tho ex¬
ecutors. administrators or other legal representatives of such
deceased partner lus proportion of tho moneys nnd of tlio
proceeds of all property and assets owned by said partner¬
ship or firm.
Sixteenth. — The provisions of this indenture may bo
nltored or modified front timo to time upon tho agreement
nnd written consont of all parties.
129
601 In witness whereof, the said Thomas A. Edison and the I
said George Harrington have horonnto set their hands, and I
affixed their seals in tho City of Now York, on tho day and I
date above written. *
GEOUGE HARRINGTON, [seal.]
In presence of, THOMAS A. EDISON. [seal.]
005 City , County and Stale of New York, ss.
On this 81st day of Docomhor, 1870, boforo mo poison-
ally appeared George Harrington and Thomas A. Edison,
both to mo personally known, and known by mo to bo tho
individuals described in and who executed tho within in¬
strument, and they severally acknowledged to mo that they
executed tho same.
CHARLES H. KITCHEL,
Notary Public in and fir
New York City and County.
Defendant's Exhibit 39.— May 10, 1877.
n„ , „ Lemuel TV. Seimell’s )
Utliees for Procuring American nnd Foreign Patents, [■
119 & 121 Nassau Street. )
P. O. Box 1089.
„„ New York, 187
007 Mr. Seriiell,
Pear Sir; If you can find it convenient this evening wtl
you please luok over tho Harrington & Edison contract nui
see if it docs not cover the Duplex and Quadruple. I alsi
leave tho power of attorney nnd will call Monday to sci
you.
Respectfully,
GEO. HARRINGTON,
Por O. B. Harrington,
..114,667, Relay for Telographs.
, . .121,601, Perforator for papor. .
!. .123,984, Telegraph apparal
..133,84
..132,456, Perforator .
..132,465, Chemical papor .
..133,019, Printing machine .
, . .128,600, Printing Telegraph. . . .
, . .128,131, Magnetic Tolcgroph...
, . .128,607, Printing Tolegraph. . . .
. . .128,604, Printing Telegraph. . . .
. . . 1 28,606, Printing Telegraph . . . .
2. .131,334, Circuit Director. .
13.134,807, Chemical Telegraph...
.134,868, Mngnotic Adjustor. . . .
2. .130,795, Electro-Magnot .
2. .131,342, Priuting Tologruph. . . .
31,343,
..Gold 4 8. Tol. Co
.[Gold 4 8. Tol. Co
May 13, 1873.. 138, 869, •• « . “
Jan’y 14, 1873.134,866, Telograph Instruments . CO
Sop. 17, 1872.. 131, 340, Printing Telegraph Insts....Gold 4 8. ToL Co. 62
“ 11. “ ..131,336, « “ " .... “ “ “ W
Sep. 17, 1872.. 131,336, Printing Telegraph Inst.... Gold 4 S.Tol. Co. 64
July 1, 1873... 140, 487, •» « “ ... “ “ " «
May 20, " ..139,129, •• « “ “ 6G
July l, » ..140,489, " “ M . . .
May 20, ” ..139,129, » " “ " c9
Sep. 23, 1873. .142,999, Galvanic Battory. . 63
Jnn’y 27, 1874.146,812, Tolegraphic Alarm 4 Signals.
Aug. 12, 1873.. 121, 776, Telegraph Circuits . Sol
May 12, 1874.. 160, 848, •» " . dc
Aug. 12, 1873.. 141,773, Circuits Chemical TsPg . dc
July 1, 1873... 140, 188, Printing Tolcgropl . Go
Bopr, 0, 1873... 142,688, Telegraph Transmitting lusts. 1
Defendant's Exhibit 41.— May 22, 1877.
ANNUAL REPORT
president
i, October 14th, 187 A-
184
622 ANNUAL REPORT
TO THE STOCKHOLDERS,
523 To the Stockholders of the Weatem Union Telegraph Company,
In pursuance of a requirement of the Hy-Laws of tin
company, and of instructions of the Executive Committee,
I submit tlio following Report of tho operations of the com¬
pany for the fiscal year ended Juno 80, 1874:
The capital stock of tbo company is $41,078,410, of
which the company owns, and now lias in its treasury,
$7,287,785, leaving the capital outstanding, $33,785,076.
Tho bonded debt is $5,946,010. Of this sum, $1,448,900
is in seven per cent, currency bonds, which will mature No-
524 vombor 1, 1875 ; and $1,498,000 in seven percent. gold
bonds, duo in 1902. The bonded dobt was reduced during
the year by the redemption of bonds of the American Tele¬
graph Company, which matured Oetobor 1, 1873, amount¬
ing to $39,500, and by the purchnsu for the Sinking Tumi
of $2,000 of the bonds of 1802.
The company has no floating debt.
The receipts for the year from all sources were $9,262,-
653.98, and tho expenses $6,765,788.88. Tho difference,
$2,506,920.15, is tho net profit.
525 There hnvo been added to tho property of tho company
during the year, by construction, purchase and lease, 6,828
miles of poles and 21,264 miles of wire, being equal to
about eight per cent, of lino and twelve per cent of wire!
and -143 more offices were in operation at tho close of the
year than at tho beginning. The company operated at the
close of the year, 71,585 miles of line, 175,136 miles of
wire, and 6,188 offices.
Tho $2,606,920.15 profits of the year have been applied 6
ns follows :
In loros t on Honda. ..^ . . . . $315,138 83
American Telegraph Co.'s Honda redeemed Oct. 1, 18
uf tho lonti of
Dividend of two per font., payubio July 15, 187-1 .
$2,012,0-16 68
Tho balance . $403,073 47 527
lms been carried to tbo credit of Income Account, and is
included in the following exhibit of tho application of tbo
company’s
PROFITS roil EIGHT YEARS.
Tho surplus of Incomo Account, July 1, 1866, was. . $275,357 24
Tho not pro Ilia for eight years, from July 1, I860, to Juno
30, 1874, worn . 22,830,538 06
Making mi aggregate Juno 30, 1874, of . $23,104,806 20
Of tliid sum there has been
Distributed ludjvidonda to stockholders (Including dividomi ^ ^ ^ ,
Tho balance . $16,010,740 05
is represented ns follows:
Construction of now lines, erection of additional wires, pur-
Purchase of telegraph lines and of the stock of companies
- ... . .... .... western Union Company on which In*
. . . . j nro paid na rental . 1,301,085 -15
Western Union mock (72.877 shares) . 4,054,483 07
Gold and Stock Telegraph Company’s stock (47,710 shares).. 1,173,500 00
International Ocean Telegraph Company* stock (10,384 shares) 961,656 42
Anglo-American Telegraph Company’s stock (£1,308) . 10,000 00 529
Central District and Printing Telegraph Companies' stock
(Pittsburgh), 200 shares . 10,000 00
Western Electric Manufacturing Company's stock (500 shares) 39,000 00
Western Union Honda — redeemed nud cancelled . 1,072,315 00
. . ** “ it Mortgngo Bonds
$1,600,000)..,
1SS
187
580 represented ns follows:
$158,651 49
PACIFIC AND ATLANTIC TELEGItAPII COMPANY.
In my Inst Annual Report it was stated that wo had ac¬
quired n majority of tho stock of the Pnoific and Atlantic
ggi 'Holograph Company, and that negotiations were thou pend¬
ing for a loaso of its lines to tho 'Wostorn Union Company.
The negotiations wore concluded in Dccotnher Inst, and on
tho first of January tho lines and property of that company
woro turned ovor to us on a lease for 09 years, at an annual
rental equal to four poroont. on the capital slock of $2,009,-
000, the rout to bo applied first to the payment of tho debts
of tlic P. & A. Co., and thereafter to be distributed pro rata
among tho shareholders. Of tho capital of $2,000,000 the
Western Union Company own $1,415,950. The entire roll-
582 tal for tho year 1874 will bo required to pay tho debts of
tho P. & A. Co. It is probnblo, however, thnt thereafter
the rental can bo distributed among tbo stockholders.
THE INTERNATIONAL OCEAN TELEGRAPH COMPANY.
Tho operations of this company during tho past year lmvo
been very satisfactory, nnd give promise of still better re¬
sults in future. As I writo, howevor, communication by
oable betweon Punta llnssa and Koy Wost is interrupted j
but tho necessary stops havo nlrondy boon taken to repair
538 the cnblc, nnd it is expected this will be accomplished in
a short time. Tho new eablo between Key West and
Havana, successfully lnid tbo year before, has boon paid for,
and tho entire floating debt of tho company disoharged
out of Inst year’s earnings. Tliero are now two good cables
betweon those points. Unless it shall bo found necessary,
in order to insure permanent communication between tbo
United States nnd the West Indies and South America, to
lay an additional cable between Punta Bnssa nnd Key 634
West, it is probable that payment of dividends to tho
stockholders of tho I. O. T. Company will bo resumed
within a year. This property is destined to increase largely
in value in tho near future.
THli GOLD AND STOCK TELUGKAPH COMPANY, cso
Of the $2,600,000 capital of this company, tho Western
Union Company owns $1,192,760.. Its gross receipts for
the liseal year ended September 18, 1874, woro $581,000
and the operating expenses $419,000, leaving $102,000 ns
the net profit, all of which wns expouded in tho extension
of its lines nnd the provision of new apparatus, of which a
large quantity was required in view of tho extremely low
rate fixed for tho rental of Stock Reporting instruments to
meet the competition of the Manhattan Quotation Company,
The Gold nnd Stock Company has expended out of its 537
net earnings during tho last four years over $700,000 for
new lines, machinery and apparatus.
MONEY TRANSFER SERVICE.
The operations of tho Department of Telegraphic Money
Orders, which has been established less than three years,
are highly satisfactory. During the last year it transferred
—that is, received at one office and paid out at another—
18*
588 about $2,000,000, for which servioo tho company received
a rovcnuo of $80,820.88. Of this sum about $20,000 was
for premiums, and tho balanco for toils on tho messages re-
quirod in making tho transfers. Tho revenue from this
source during tho preooding year was about $57,000, and
tho increase during tho pnst year hns boon about forty nor
cent. Tho inoreaso in tho number of transfers, however
was about sixty por cent., attended by a reduction of the
avorago amount transferred in each ease from $81.81 tho
preceding year to $01.88 during tho past year. ' This re-
530 duction and increase indicates tho growing popularity of
tho service. The receipt in small sums, at a largo number
of offices, of an aggregate of $2,000,000, and tho payment
of this amount at other offices, involving tho handling of
$4,000,000, hns boon attended by an aggregate loss to the
company during th o year, from errors and defalcations, of
only $110. During tho same time a larger sum has accu¬
mulated in tho treasury of the company from cases where it
was impossible to find citlior the transferee or the person
making the deposit for transfer. This branch of the servico
ilO is under the immediate charge of Vice-President Mumford,
who prepared the rules and regulations for the conduct of
the business. In view of the success which has attended
their operations, this specific acknowledgment seems to ho
duo to him.
tt tho close of tho fiscal year, June 80, 1874, tho account
1 tho new building presented the following exhibit:
Of this sum $1,600,000 is represented by tho bonds of
the oompnny due in 1002, and tho balance, $281,284.81, has
M
been paid out of tho current earnings. To tho lnttor may 642
now ho added tho further sum of $168,080.08, paid during
the quarter onded Soptombcr 80th, making a total of $484,.
816.70, for wbioh the Building Account is indobtod to In-
como Account.
Tho work on tho building was greatly dolnyod during
last fall and winter by tho fniluro of tho contractors to sup¬
ply the granite at tho rate agreed upon, and Inter, by delay
in the delivery of other materials. 'The work is now pro¬
gressing rapidly, and it is expected the portion to bo occu¬
pied by the company will be ready by Christmas. 543
GENERAL REVIEW.
A comparison of tho results of the company's operations
during tho Inst fiscal year, and the one preceding, shows a
reduction of $70,864.63 in gross receipts, and of $261,042.64
in tho net profits.
This diminution of receipts and profits resulted from two
causes: first, the reduction of rates, which took cfi'cct July
1, 1878, pursuant to plans formed and instructions issued 644
six months before ; and second, to tho financial panic of
September, 1878, and the general stagnation in every de¬
partment of business which immediately followed, and from
which there has been but a partial recovery.
Commencing with July, 1878, the profits, as compared
with the corresponding months of the preceding year, were
loss each mouth up to and including February, 1874, at
which lime the aggregate falling oil' for the eight months
of the fiscal year was $580,684.00.
For March the profits were in oxcess of March, 1873, and 545
at the end of June the inoreaso over tho corresponding four
months of last year amounted to $338,621.66, leaving a
deficiency of $261,042.54, ns stated above.
Although this report is for the year ended June 80th last,
it seems proper to add, in this connection, that tho profits
for tlie first quarter of tho current year, which ended Sep¬
tember 80th, show an increase over tho corresponding
months of last year of more than $800,000.
The fiscal year is from July to June, both inclusive. A
SeptcHbor SOU, nro i» excess of the 12 months ofl 2
ho excess during the 7 months ended September m
being $040,484.73 over the corresponding 7 months or 1878
—an avurago inoreaso of nearly $100,000 n month
JusSITS 1 •' OSSftSOS.tra"SmiU°d (,uri"8 the Inst year
ivas 10,8-9, 2o0, being an inoreaso of 1,872,424 (about 13
,c‘ co"t0 ovur ilio preceding year. Deducting from the
jross receipts moneys received from other sources than for
lie transmission of messages, and dividing the remainder
>y tho number of messages, it appears that the average re-
IC,Pt fo1' oatih lncs3age was about 55 cents. As the charge
ier message is for a minimum of 10 words, the average
ncssago must contain more than 10 words ; so that the
verngo receipt per message is necessarily greater than the
nrill fixed for a 10 word message. A uniform tariff of 50
cuts per message of 10 words between all stations on Ilio
ompnny’s lines, without regard to distance, applied to the
icssages transmitted during the last year, would liavo
leldcd a revenue somewhat in excess of the actual receipts.
I he rates now charged on the lines of the Western Union
empany are but little above the average European rates.
Dusidonng the vast difference in the density of population,
id the greater distances over which messages are rent in
is country, and the cost of maintaining a greater length
lino through sparsely settled sections, to reach the same
"“her of people, and the higher cost of labor, and of all
Uerial employed in telegraphic operations, the service in
is country is relatively much cheaper than tiie average
Europe.
DUPLEX AND QUADRUPLEX TELEGRAPHY.
I’lie Duplex apparatus of Mr. J. B. Stearns, by means of
loli two messages are transmitted in opposite directions
on one wire at _tho same time, lias fully sustained the
1110,1 ol its uti% and value which I expressed in my
t Annual Deport. It has been put in operation during the
t year upon a number of additional circuits, and is now
rking successfully between all tho principal cities. Its
latest application was upon the linos to tho Pacific const,
nnd it is now in uso betwcon Port Hustings, on the island of
Capo Breton, wlioro our linos connect witli tho oable wires
and San Francisco— a distance of nearly 5,000 miles.
But tho past year has produced an mvontion tnoro won-
ilorfnl than the Duplox. Mr. Thomas A. Edison and Mr.
George II. Prescott, the electrician of tho company, liavo
discovered processes and invonted apparatus by means of
which two messages uau bo sent in the same direction, nnd
tiro other messages in thcopposito direction, simultaneously
upon one and the same wire. This invention, which they
have christened the Quadruplex, lias been in successful
operation betwcon our Now York nnd Boston offices for tho
Inst two weeks, nnd it is satisfactorily performing an amount
of work upon one wiro quite equal to the capacity of four
wires worked with tho ordinary Morse apparatus.
The inventors claim that the Quadruplex may be used
cither as 1 wiro, as 2 wires, 3 wires or 4 wires, as tho
pressure of business may require: thatwhon it is worked ns
2 wires intermediate siations may be inserted, nnd may send
and receivo as with two separate wires in tho ordinary way.
I have given much personal attention to the development
of this invention, in tho belief that if it could bo utilized to
tho extent claimed by its inventors, it would solvo satisfac¬
torily the most difficult problem which has ever been pre¬
sented to tho managers of telegraph companies, and that is :
How to provide for the rapidly increasing volume of business
without an annual expenditure for the erection of additional
lines and wires that would prevent the payment of reason¬
able dividends to stockholders. So much has been accom¬
plished already nnd in so short n time that it seems more
likely that these predictions will bo fully realized than that
tho fulfilment will fall materially below tho promise.
In my last Annual Report I made tho following state¬
ment concerning the Duplex apparatus:
“ We are now operating more than 160,000 miles of wiro
"and tho pnst two years have been extending at the rate of
" nearly 20,000 rnilo3 of wiro per annum. Tho Duplex ap-
" paratus is capablo of doubling tho capacity of these wires
“at a comparatively small cost. Tho valuo of this increase
“or facilities can bo approximately ascertained by ostimat-
“ing tho savings in the investment for wire, and the anmi.
“al saving in repairs and maintenance of additional wires.
“But die great value of the Duplex does not consist in tlio
“ saving in the investment in wires, and the cost or repairs
“and maintenance, but in its ability to double tho capacity
“of a wire when wo linvu but one, and when no amount of
" money previously invested in wires, or oven possible to bo
“ expended in repairs, can provide another."
These remarks will apply with oven greater force in tlw
Quadruplox, if it shall prove capable of working through
tliu same distances, and under like conditions as tho Duplex.
It is not easy to estimate tho valuo of an invention which
enables any and every wire between ail the principal cities
in tho country, and between tho Atlantic and Pacific coasts,
to be madooqiial to two, in a minute by merely turning a
button ; but it is very ovidont Hint tho ability to practically
convert one wire citlior into 2, 8 or -1, as tho convenience
or necessities of the business may require, is still moro vain-
Tho Quadruplox, like tho Duplex, is partially substituted
for, and worked in connection with tho Morsu apparatus,
No change in the ordinary operating force, nor any pre¬
vious preparation ofinossagosis required, ns with tho auto¬
matic system, so that a continuance of the same simplicity
and economy of manipulation and promptness of service
which have characterized the Western Union Company's
system of telegraphy is assured. All tho essential patents
for tho Duplex are owned by this company. Negotiations
for the purchase ortho patents of the Quadruplox are pend¬
ing, but the terms will not bo settled until after tho charac¬
ter and extent of its eapneity for work lmvo been more fully
ascertained.
“ FAST" TELEGIIAITIY.
This is tho fhvorito designation given by its frionds to
what is bettor known ns tho Automatic system. Why it
should be called “fast"— in view of tho fact that, before a
been able to comprehend.
In this review of telegraphic operations during tho
year, it is only necossary to say concerning “fast" I
grnpliy, that tho progress of ilsdcvelopmont line boon exc
iiiglyslow. Tho latest attempt to utilize it in this com
was made in 1809, on a line or one wire between Now \
and Washington, and now, at tho end of live yem
stands about where it began.
Although tho evidence which I have accumulated is
sufficient to convinco me that Automatic telegraphy
scssos any valuo to tho Western Union Company, in t
of its control of the duplex, and of the probnblo utilize
of the Quadruplox, yet I lmvo not failed to givo careful at
tion to tho subject, and whonovor it shall bo demonstr;
that any system of automatic tologrnphy can beadvant
filtsly used on our linos it will be promptly in trod u
The claim that anything essential to the successful op
tion of automatic telegraphy — whethor by tho clioin
paper plan of Bain, or tho later ouo of Wheatstone
covered by controlling patents, is without foundation.
HEBUMl'TION OF DIVIDENDS.
My last annual report concluded as follows:
» With the increase of wires already provided and no
“ progress, the capacity or which tho duplex apparatus
“ be able to double at small cost, it is believed that tho
“ stnutly ineroasing volume of business, tho growtl
" which will bo stimulated by tho present low and uiiil
“ rates, can bo successfully handled with a less annua
» vestment in new construction than has heretofore 1
“ necessary ; so that, with competition cheeked, and in
“ cess of being extinguished, tho percentage of oxpc
“ may bo reduced, and the paticnco of tho stockholder:
“ warded at an early day by tho resumption of regular <
“ donds."
This prediction has already been verified. At tho si
annual meeting of tho directors, held on tho 8(1 day of J
562 profils for tlio quarter ending Juno 80lli, was declared. Tho
profit'! for tlmt qmirtor wore $762,020.44, Oil the 24 day
of September nnothor dividend, for tho quarter ending Sep¬
tember 80th, was declared. Tho profits of tho second quar¬
ter wore $S82, 008.85. Tho excess of profits tor the two
quarters over tho amount required to pay the two dividends
is $248,875.
It is tho intention of tho directors to continue the policy
inaugurated at the Juno mooting, and to divide the net
profits quarterly hereafter, and to provide otherwise for the
563 payment of such property as it may be deemed advisable to
acquire.
Eospectfuliy submitted,
WILLIAM OHTON,
President.
DcfciHlunt’s Exhibit 42 _ May 23, 1877.
WESTERN UNION- TELEGRAPH COMPANY, LAW DEPARTMENT.
51,4 [ 1>0BTERi LOWIIEV, SOKKN & STONE,
a.oitoik ihxus. ) No. 8 Brood Street (Droxel Building),
p.o.norisM. New York, February Or//, 1875.
Thomas A. Edison.
Fir: Your letter addressed to Hon. William Orion, Presi¬
dent ol tho Western Union Telegraph Company, lias been
handed to us by him, with instructions to say to you that,
although the date and address at the top of tho letter (in a
)G5 handwriting different from either the body or signature of
tho letter) is "Wash., D. C., Jan. 26, '76," the letter was not
received until this day, nml thnt the onvelope, on its re¬
ceipt, bore tiie New York Post Office stamp ns of “ Febru¬
ary 9th, 6 A, M."
We arc instructed to say that tho company are willing
to accept tho title which you nnd Mr. Prescott undertook
and are ablo to give them, nnd will tnko all risks of any
other titlo being established against them or you by Mr-
145
Harrington in respeot to tho inventions cc
negotiations, nnd, ns they are advised and b
nnd Mr. Prescott's binding agreement with tl
inventions or patents thereon, described in ;
with Mr. Prescott, dated Aug. 10th, 1874.
Wo are authorized and instructed to say
ern Union Telegraph Company will indemni
oiler to indemnify and defend you against ai
Mr. George Harrington may, by virtue of
between you and himself prior to tho dot-
agreement with Mr. Prescott, make for an jut
ents or inventions above mentioned, or for d:
as against all cost and expense of your delei
now call upon you for prompt action, in goi
tain the issue of patents upon those inventic
and Mr. Prescott jointly, nnd the transfer ti
upon the terms proposed bv you and accepted
letter of Jan. 19th, 1875, as follows:
“J.i
" Thomas A. Edison, Esq., nnd
"George B. Prescott, Esq.
" Gentlemen : lleferring to the negotiation:
“ments heretofore made between you and
"Union Telegraph Company for the sale ni
“ that company of all your patents relating
“ and quadruples telegraphy, subject 10 dell
“ ment of compensation to bo paid, and esp
“ two oilers in writing made by you on or a
"day of December last, as follows:
-“'1st. We will take twenty-five thousai
11 twenty-five thousand in six months for all
“royalty on quadruplex of $166 per year ft
"created.1
“ ‘2nd. We will tnko twenty-five thousand
11 patents, and a royalty of $233 per year ft
“ created.’
“ I hereby notify you, on behalf of the \\
" Telegraph Company, that tho proposition
140
670 “ tion above quoted, and by you marked ‘ 2,’ is hereby ac¬
cepted as made, and llio company is ready to close the
“ business at your earliest convenience, and to muke all the
" payments called for upon receiving from you proper as¬
signments and transfers of the said patents.
“ Tory respectfully,
“WILLIAM ORTON,
"President."
Wo are directed by Mr. Orton to Ray, in respect to that
671 portion of your letter in which you say, “ tho claims of Mr.
Oy-iX Georgo H irrington under a prior contract and irrevocable
power of attorney, of which you were aware,” that ho, Mr.
1 Orton, was not aware, at the lime of such negotiations, nor
. until since the writing of his letter to you above quoted, of
tho existence of any contract between you and Mr. Har¬
rington, except ns he may havo boon by law chargeable
with knowledge of whatever was on record in the Patent
v (TpfinvT1*^? Office ; but that, on the contrary, you, on one or moro occa-
Hu.4 iUYlCCudvty sions, stated to him that, although you had had some rein-
/ ' Jyvfcufl • ^ l‘ons °7 °°ntraet with Mr. Harrington, they related entirely
to other and different subjects, nnd had no relation what¬
ever to the inventions concerning which tho Western Union
Telegraph Company was then in negotiation; and upon
this, as a statement of fact, Mr. Orton relied in making the
expenditures of money and labor which were made at your
request.
'• An cnrly answer to this letter will oblige
lm 573 PORTER, LOWREY, SOREN k STONE,
I Ja Attorneys for the Western Union Telegraph Co.
ifa . ®*' — We call your attention to the terms of the injunc-
A|S l'on 'n. tl10 onsB of 1,10 Westorn Union Telegraph Company
wff f • ®3lsoni an3 to tho fact that any infringement of that in¬
i'll junction by selling, licensing or otberivisc, by yourself or
lj§9 Goulll> professing to act ns your ntiornoy, will render
y°a personally liable for punishment for contempt
Kfg Tory respectfully, yours,
sm P., L., S. & S.
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c^ticQ.
QUADRUPLEX CASE VOLUME 73 - CONTENTS
Atlantic and Pacific Telegraph Company v. George B. Prescott. Western
Union Telegraph Company, Lemuel W. Serrell and Thomas A. Edison.
Superior Court of the City of New York.
1. Findings. June 3, 1878. 12 pages.
2. Statement of Facts and Requests for Findings Submitted on Behalf
of Plaintiff, with annotations by Judge Charles F. Sanford. 24
pages.
3. Another copy of the above, without annotations. Not filmed.
4. General Sketch of Plaintiff's Argument. 13 pages.
5. Points for Plaintiff. 27 pages.
6. Argument of Everett P. Wheeler. 63 pages.
7. Brief for Plaintiff by John H.B. Latrobe. 44 pages.
8. Brief for Plaintiff by Benjamin F. Butler. 88 pages.
9. Brief for Plaintiff by Wyllys Hodges. 27 pages.
10. Argument of Leonard Myers, of Counsel for Plaintiff. 50 pages.
11. Brief for Plaintiff by R.W. Russell. 146 pages.
12. Proposed Findings of Defendant, the Western Union Telegraph
Company. 12 pages.
13. Brief Suggestions of Points. 9 pages.
14. Defendants' Brief. 96 pages.
15. Argument of Grosvenor P. Lowrey. 100 pages.
16. Argument of E.N. Dickerson. 93 pages.
17. Opinion. Sanford, J. June 3, 1878. 47 pages.
tern Union Telegraph Company are, respectively, corpora¬
tions incorporated under the laws of llio State of New York,
for the purpose o( constructing anil operating lines of tele-
graph within the United States, and acquiring such prop¬
erty ns shall be necessary or proper for that purpose, and
are now and have, for many years, been engaged in the 8
business of operating telegraph lines within .the United
States.
Second. — That, in the month of February, 1878, tko de¬
fendant, llio Wcstorn Union Telegraph Company and
Thomas A. Edison, entered into an agreement togethor,
whereby, on said Edison's part, ho agreed to proseouto ex¬
periments for improvements in duplex and othor modes
of multiple transmission, in elcctro-mngnotio telegraphy,
aud for making discoveries of now methods of such
4 transmission for the exclusive benefit and use of the
defendant, the Western Union Telegraph Company ;
and whereby iho defendant, the Western Union Tele¬
graph Company, on its part, agreed with said Edison .
to furnish facilities and material for the prosecution of such
experiments, and the development of idl discoveries and
' inventions which should result therefrom ; and whereby
both parties fin liter agreed, that all of Edison's said inven¬
tions in duplex and tpindruplex telegraphy, resulting front
such experiments, should, upon the making thereof, bo tho
6 property of the defendant, the Western Union Telegraph
Company, and that whatever Letters Patent for any of such
inventions Edison should be entitled to receive, ns invuntor
should bo applied for by him, and be transferred by him to
tho defendant, the Western Union Telegraph Company;
a.ul that for all such hive . ms and patents he should re-
receive snub price as should be just, and that the amount
thereof should be ascertained, in title time, cither by agree¬
ment of the parties, or, ir they failed to agree, by arbitm-
0 Third. That, in pursuance of said last mentioned agree¬
ment, the said Edison began such experiments in February,
187S, and continued the same until the month of June
1874, ami the defendant, the Western Union Telegraph
Company, tinring the same time, furnished to said Edison,
in pursuance ol said contract, facilities in material and in
tho use and servieo of its lines, operators, workshops,
machinists, and other employes, ami in all other respects
performed said eontnict on its part.
7 Fourth. That on the first day of June, 1874, tho said
Edison entered into tin agreement with- tho defendant,
George B. 1 tvseott, with the consent of tho defendant, the
Western Union Telegraph Company, whereby it was agreed
tmtdtefitr, her experiments under the saiAgree.no, at
tween the - nd Company and the said Edison, should bo
prosecuted by the said Edison and Prescott together; and
“"T "IT," be roccive<l from tllu defendant,
tho Western Union lelcgrapli Company, for tho said in-
:f ventions, should be shared by them, the said Edison and 8
I Prescott equally ; and the defendant the Western Union
I Telegraph Company thereupon consented, at the request of
i t|,c alid Edison and Prescott, to deal thereafter with the
f said Edison and Prescott jointly, in the placo and stead of
1 the said K alone, in reference to the subject of the ,
; said agreement between it anil the said Edison.
‘ f,yjh _ q’liat tho said agreement mentioned in the second
} finding! as modified as stated in the fourth finding, contin-
a ued in force up to the Otli day of February, 1875. 9
I Sixth. _ That on the 9th day of July, 1874, the defendant
| Prescott, and the said Edison, mado and executed Iho in-
;j striiincnt in writing dated that day, set forth in defendants
| Exhibit 80.
1 Seventh. — That on the 10th day of August, 1874, tho do-
j fendant Prescott, and iho said Edison, made and executed
tho instrument in writing dated that day, sot forth in Ex-
I hibit F annexed to tiie complaint in substitution for the 1Q
i instrument in writing mentioned in tho sixth finding ns
! Defendant's Exhibit, 30 ; and Hint the saino was filed and
recorded in the United Slates Patent Office on the 89th day
of Augus., 1874, in Liber K, page 02, of Transfers of
Patents.
Eighth. — That on .the 19th day of August, 1874, the
said Edison and verified seven applications for
Letters Patent of tho United States for certain improve¬
ments in clectro-magnotic duplex telegraphs therein spool-
Bed; which said applications wore dated dint day, and 1
were numbered respectively 94, 95, 90, 97, 08, 99 and
100; and that. on the 14th day of December, 1874, the
said Edison obcSSw and verified an application for Let¬
ters Patent of the United States for a certain other i mprove¬
ment in clcctro-magnctio duplex telegraphs, which said
application was dated on that day and numbered 112 ; and
that on the 24th day of February, 1875, the said Edison wccAufr
eeoted-atid verified a certain otl.er application for Letters
i!
12 Patent of the United States for an improvement in quad-
ruplex telegraphs, which application was dated on that day
and numbered 113; and that all of the said nine applica¬
tions, with the oaths, specifications and drawings attached,
were severally filed in the said Patent Office shortly after
their said dates, and were in the several respective forms
’ set forth in plaintiff's Exhibits 11, S and T.
Ninth. — That the several inventions specifically described
in the said agreements, dated July Dili, 187-1, and August
19th, 187-1, mentioned in the sixth and seventh findings
18 of fact herein arc respectively the same inventions specifi¬
cally described in the said several applications mentioned
in tho eighth finding of fact herein.
Tenth. — That nil and singular the inventions specifically
described in the said applications set forth in the eighth
finding of fact herein, together with others, were made, or
perfected so ns to bo practical, by the said Edison for the
defendant, the 'Western Union Telegraph Company, and
under and in pursuance of and after the making or his said
1-1 contract with the said the Western Union Telegraph Com¬
pany, mentioned in the second finding of fact herein, as
modified, as stated in the fourth finding; and not before,
and not under or in pursuance of certain agreements, dated
October 1st, 1870, and April 4th, 1871, mentioned in tho
eighteenth and twentieth finding herein, or either of them.
Eleventh. — That the defendant, Gcorgo B. Prescott, under
and in pursuance of his said contract with said Thomas A.
Edison, dated August 19, 187*1, and on account of the con-
15 adoration thereby pnyablo by him, did, without contribu¬
tion from the said Edison, pay all tho fees required by law
upon filing tho applications referred to in said agreement
and in the eighth finding.
7 wcljth. — That the defendant, the Western Union Tele¬
graph Company, paid to the said Thomas A. Edison tho
sum or five thousand dollars on the 10th day of December,
1874, and to tho defendant, George B. Prescott, the further
sum of fivo thousand dollars on tho 10th day of January, 10
1876 ; both of which payments were so made, and wore ac¬
cepted by said payees respectively, in part payment of tho
consideration payable by said company to them, under and
|iy vjrtuo of the agreement between said company and said
Edison, mentioned in tho second finding of fact, ns modi¬
fied by the subsequent agreement between said company
and said Edison and Prescott, as set forth in the fourth find¬
Thirteenth. _ That on or about the SOlli day of December, 17
1874, tho said Edison and Prescott, in pursuance of their
I said agreement will, the said the Western U nion Telegraph
Company, submitted to tho defendant, tho Western Union
'IVImrrnnh Comoniiv. the two alternative propositions in
writing, sot forth in Exhibit D, annexed to tho answer of
the said defendant, the Western Union Telegraph Com-
' 'IT at the two propositions last aforesaid remained open,
nnrevoked and in full cfieot, until tho 19th day of January,
1875, on which day tho defendant, the Western Union ;
Telegraph Company, accepted the proposition marked
se-ond in said Exhibit D, and delivered to the said Prescott
on the said 19th day of January, 1876, and to said Edison
on the 20th day of said January, 1876, the notice in writing,
a copy of which is annexed to tho answer herein of said
Fourteenth. — That on tho 14th day of December, 187o,
the defendant, the Western Union Telegraph Company, and
said Thomas A. Edison executed the instrument, dated the 1Q
14th day of December, 1875, a copy of which is sot lortli
in defendant’s Exhibit 29.
I Fifteenth. — That on tho first day of October, 1870, tho
1 said Edison made and entered into an agreement with ono
George Harrington, of which a copy is annexed to tho com-
: plaint herein marked A.
Sixteenth. — That on the 11th day of January, 1875, tho
20 contract mentioned ii
corded, tor the first til
at Washington.
Seventeenth. — That on the -1th day of April, 1871, the said
Edison executed and delivered to the said Harrington the
instrument in writing, dated that day, of which iMuudanAi
, \ r tLc tnu/tfoiol' I ExilihirSRis a copy ; and that the said instrument of April
* l' 4, 1871, was recorded in the said Patent Office on the sixtli
day of May, 1871, in Liber U 18, page 112, of Transfers
0 1 of Patents, and not at any oilier time, either before or after
said Oil. day of May, lSTl^trlW V (h
Eighteenth. — That after the 2Cth day of January, 1875, £
• the said record in the United States Patent Office of the said v
instrument, dated April -1,1871, was ft
I
lenity,- without the knowhjdgojii; mnsent of du^ffij-
telegraphy,” and before the words “ mechanical printers,”
so as to conform to and contain the same words ns the Ex-
22 iiibit marked 11, annexed to the plaintiffs' original nml
amended complaint herein, nml referred to in the fourth -
paragraph of the said original and amended complnint.
Nineteenth. — Neither of said instruments of October 1,
1870, and April 4, 1871, contemplates or includes any of
the inventions or improvements described in any of tho
applications winch arc referred to in the eighth finding of
fact herein.
23 Twentieth. — That at some time in the year 1872, and
before the 0th day of February, 1872, and before the mak¬
ing of tho agreement between the defendant, the Western
Union Telegraph Company and the said Edison, mentioned
in the second finding of fact herein, tho said Harrington and
Edison dissolved the partnership between them, provided
for in the said agreement, dated October first, 1870.
Twenty-first. — That the said Thomas A. Edison had not,
either attlie time of mnking the agreement between Edison 24
and Harrington, dated April 4, 1871, mentioned in tho
seventeenth finding of fact herein, nor at the time of the
dissolution of tho said partnership between said Edison and
Harrington, as set forth in the twentieth finding of fact herein,
nor at any other time, cither before the said dissolution of
partnership mentioned in the twentieth finding, or before tho
mnking of tho ngreemont mentioned in tho second finding,
arranged in his mind the process and means, the combina¬
tion, powers and machinery, or any or either of them, em¬
bodied in the said application No. 09, or in any of the other 25
applications mentioned in tho eighth finding of fact herein,
and had not developed tho same, or any of them, either so
far that he was confident of ultimate success, or at all.
Tu/iCUuefi
Twenty-second. — That - tho^ automatic or fast system of
telegraphy 'mentioned in tho contract of April 4, 1871,
between Harrington and Edison, is a system of electro¬
chemical telegraphy, and is not a system of “electro-
magnetic " telegraphy.
Twenty-third.' — That tho inventions specified in tho eighth 20
findin.r aro inventions in and improvements upon tho electro-
mimnetic system of telegraphy, and are not inventions in, nor
iinprovenu nts upon the ulcetro*ehctuical or automatic system
of telegraphy; and Unit they aro not a useful or valuable ml-
dition or additions to any automatic system of telegraphy,
or to the instruments or machines, or any of them, constructed
by the said Edison for the purpose of developing tho Littlo
or any other system of automatic or fust system of telegraphy
into practical use ; and tho said inventions aro not, nor is
any one or more of them, adapted for the purpose of sue- 27
ccssfully or economically developing tho Little or any otlici
system of automatic or fast system of telegraphy into practical
use ; and tho said inventions are not, nor is any one or more of
them, applicable to automatic telegraphy, or to any «<**■*
• . : al printer.
Twenty-fourth. — That tho defendant, George 15. Prescott,
had not at tho time of tho making or recording of said
os agreement, dated August 10th, 1S74, or at any otlicr time
beforo the 23d day of January, 1875, any knowledge or
notice of the said contracts, or either of them, dated Oc¬
tober 1st, 1870, and April -Jlli, 1871, or of the execution of
the same, or of either of them, by said Edison and Harring¬
ton, or by cither of them.
Twenty-fifth. — That tho stud Western Union Telegraph
Company had not at the time of making the saal agreements
with said Kdison and with said Kdison and Prescott, men
tinned in the second ami fourth liudmgs herein, or at the
20 time of paying to stud Kdison the said $5,000, set forth in
tho twelfth finding herein, or at any other time beforo the
28d tiny of January, 1875, any knowledge or notice of the
saal instruments or either of them, dated October 1, 1870,
or April -1, 1871, or of tho execution thereof by saal
Harrington and Kdison, or cither of them.
Twenty-sixth. — That after tho 13th day of January, 1875,
George Harrington executed and delivered to Jay Gould
tho assignment purporting to be dated on the 1st day of
) January, 1875, a copy of which is annexed to the com¬
plaint and marked Kxhihit C, and the said Gould, on the
14th day of said January, paid to said Harrington $5.000
— ns the eonsnlerallon of saal assignment;* sriljlhat on
the fllli day of March, 1875, the said Harrington executed
and delivered to said Gould the instrument of which Kx-
liibit 1), annexed to the complaint, is a copy; both of which
wore recorded in the United States Patent Office on tho
81st day of March, 1875.
'J'wcntyeiyhth. — That on the 4th day of January, 1875, tho
said Edison executed and delivered to said Gould tho
t ..at . ..i.ic.it of which Exhibit K, annexed to the complaint,
is a copy, and the same was recorded in the said Patent
Office on the 5th day of January, 1876.
Twenty-ninth . — That on the sixth day of January, 1875, 82
I the said Jay Gould executed and delivered to Samuel M.
S, Mills, tho instrument of which plaintiffs Exhibit L is a
II copy, which was recorded in said Patent Office on April
S 10th, 1875.
Thirtieth. — That on the lltli day of January, 1875, tho
K said Mills executed and delivered to the plaintiff the instru-
ffj incut of which plaintiffs Exhibit M is a copy, which was
’!■ recorded in said Patent Office on said 10th day of April,
ti i87e- . 33
Thirty-first. — That on tho 10th day of January, 1875,
the said Jay Gould executed and delivered to tho plaintiff
the instrument of which plaintiffs Exhibit K is a copy,
which was recorded in said Patent Ollico on tho lltli day
of April, 1870.
Thirty-second. — That at tho several times when tho said
, instruments, bearing date on tho 1st, 4th, and 10th days
| respectively of January, 1875, and March 9th, 1875, wero 34
executed and delivered to and by said Jay Gould, tho said
Gould knew and had notico of the said agreement botweon
said Kdison and the said Western Union Telegraph Com¬
pany, set forth in tho second finding herein, and of tho
modification set forth in the fourth finding herein, mid of tho
said agreements between Kdison and Prescott, sot forth in
the sixth and seventh findings herein, and of tho perfor¬
mance of said agreements and payments thereunder, set
I forth in the third, tenth, eleventh and twelfth findings bore-
:.jj in, and of tho making of said alternative propositions, sot gg
forth in tho thirteenth finding of fact heroin.
Thirty-third. — That tho said Gould procured and accepted
the execution and delivery of the said instrument, dated on
tho 4th day of January, 1875, from the said Kdison, and of
:: said instruments dated January 1st and March 9th, 1875,
v from tho said Harrington, and paid the several considerations
therefor, on behalf of and as the agent in fact of tho plain¬
tiff herein and for its uso nnd benefit.
2
i° I'i
36 Shirty-fourth — That the said Mills accepted the execution ;•
and delivery of said instrument, bearing date January Otli,
1875, on behalf of and ns tho agent in fact of the plaintilT ’
herein and for its use and benefit, anil did not at or after said ij
day pay to the said Gould, or to any other person, any,
consideration therefor,
T/iirty-JijVi.—’nm at the several times when the said in¬
struments. hearing date January lHh and January lfitli,
1875, wore executed and delivered respectively bv the said
Mills nnd the said Gould to the plaintilf, the plaiutilf knew ;
mid had actual notice of the said agreement between said f
Edison nnd tho said Western Union Telegraph Company,
set forth in the second finding of fact herein, and of the
modification thereof, set forth in the fourth finding of fact
nnd of the snid agreements between said Edison and Pres¬
cott, set forth in the sixth and seventh findings of fact
herein, and of the performance of said agreements and pay¬
ments thereunder, set forth in the third, tenth, eleventh ami
twelfth findings of taut herein, and of tho making of said
. alternative propo.-itious, set forth in the thirteenth finding of
8° fact herein.
CONCLUSIONS OF LAW.
First. — That the defendant, the Western Union Tele¬
graph Company is a purchaser in good faith and for value
of all and singular the inventions described in the said ap¬
plication, Case No. 09, and of all and singular the inven¬
tions described in the oilier npplieations referred to in the
eighth finding of fact heroin, without uoliee of any right,
title, interest, claim or demand in law or in equity of tho
30 plnintilV herein, or of s aid Georgo Harrington, or of any
other person, in or to thosamo inventions, or any of them.
^ Second.— 1 1, at the agreement nm lo between Thomas A-
Edison and the defendant, tile Western Union Telegraph
Company, set forth in the second finding of fact herein,
and the modification of said agreement set forth in the fourth
finding of fact herein, were and arc respectively valid
agreements, binding upon the said parlies thereto, according
to their respective terms ; and that each of said agreements
has been duly and fully performed by the said Western
i n
| Union Telegraph Company, on its part, as respects the said 40
| Edison, and also ns respects the said Prescott, except as to
■E tho payment to tho defendant Prescott of one half of tho
i moneys called for by tho acceptance, referred to in tho thir-
| tecnlli finding, of the proposition therein referred to.
'j’hinl _ That the recording of said assignment of August
10, 1S74, ns set forth in tho seventh finding of laet herein,
> was duly made, according to law, on the said 29th day of
■ August, 1874, nnd such record operated ns notice at alt
times thereafter to the said Gould and tho said Mills nnd to
| tho plaintiff, of tho said assignment and of tho terms nnd
| conditions therein contained.
Fourth. — That the defendant, George B. Prescott, is a pur-
’ chaser in good faith, and for value, of one equal undivided
« one half interest in nnd of all and singular tho inventions do-
: :: scribed in said application, Case 09, and in and of all and
1 simiilar tho other inventions described in tho other appli-
1 eatTons referred to ill the eighth finding of fact hcicin, with-
out ,,otieo of any right, title, interest, claim or demand in
" law or in equity of tl c 1 1 1 t If 1 e e l o of 1 Ccoi„o
S Harrington, or of any other person other than tho defendant,
i’i the Western Union Telegraph Company, in or to tho said
inventions, or any of them.
Fifth. — That the making and recording of the assign-
mont of August 10, 1874, set forth in the sovontUiiuhng o^
4 fact herein, vested in tho said . . <=f Ed'son. as the
: assignees of said Edison, at tho date thereof, tho legal l ie to
\ tho inventions described in tho said application, No Oil, and
f in all tho inventions described in tho other applications
I referred 'to in tho eighth finding of fact herein, in tho pro- 43
'] portions and subject to tho terms and conditions in said
■3 assignment set forth, and subject, and subject only o ho
I equitable rights of tho defendant,- the Western Un on
f Telegraph Company, under its agreements sot forth in tho
II second nnd fourth findings of fact herein.
1 Sixth* — That tho said record of tho said instrument, dated
1 April 4, 1871, was not notice to the defendants, the Western
I Union Telegraph Company and Prescott, or either of them,
vl of the said instrument, dated October 1, 1870.
44 Seventh . — Tlmt the record of said instrument of April 4,
1871, was not authorized or required by law, and was not
notice to the defendants, the Western Union Telegraph
Company and Prescott, or either of them,' of the contents of
the said instrument or of the fact of such record.
liigfith. — That no title, legal or equitable, to the invention
described in said application, No. (ttl, or in any of the appli¬
cations mentioned in the eighth hading of fact, or in or to
any patent issued or to be issued for the satitOj or any of
them, nor any power to assign or convey any interest
45 therein, vested in said George Harrington, cither solely or
jointly with said Thomas 'A. Edison, under or by virtue of
said instruments of October 1, 1870, and April -1, 1871, or
either of them; nor did any legal or equitable title thereto
vest in said Jay Gould, nor in the plaintiff, the Atlantic and
Pacific Telegraph Company, under or by virtue of tlio
said assignments to it by said Mills, dated January 11th,
1875, and by said Gould, dated January 10th. 1875. or
either of them ; nor did any power or authority to convoy
or assign any interest in said inventions nnd pntents, or any
40 of them, vest in tho said Gould under or in virluo of said
instruments bearing date January 4, 1876, and January 1st
and March 9, 1875, or any of them.
47
Niith.—Tha defendants, tho Western Union Telegraph
Company and George 11, Prescott, are severally entitled to
judgment'
!g"t" ""ll . . 1 1 1 niiiniiiirniiiiimd -n„l ,n -l, 1 r,-n„
^nnlimr n.i.l ..pplt . . ■ r;„ I , . n . j
■tlm "mluli, finding nr -ln.r nf ika . j ftp, a lOtliiia
Superior Court,
C I T Y O F X E \Y Y 0 11 K .
Ati.a.vi'Ui a n i i Pacific Tui.u-
(I ISA I'll COMPANY. |
lll/llillx/ |
Gt.oru.r 11 Pittx on, et. at.
Statement of Facts and Requests for
Findings submitted on Behalf
of Plaintiff.
The plaintiff considers I hut the following fuels
tiro established by flic testimony, nnd requests the
Court lo find flic same tun) oncli of them ns follows :
with the costs of this
First.— On the first day of October, 1870, n
partnership agreement was made between Thomas
A. Edison and George Harrington, of which a copy
is annexed lo tin1 complaint, and marked Exhibit A.
Second.— Iii pursminci;
alios in it continued for- a liiit« to iiiiiiin iiri>
i> machinery ami insl rn iin.‘iit s mentioned in llju
si clause df’llin agreement, nl u shop in I In* city
Newark, Now Jersey, which wns n-tucil for liml
irpost*.
Third.— The said Kdison, in pursuance nf liml
■refluent, emit inncil in nmki1 experiments fur the
ii'pose of piodming inventions and impmvomonH
Hid various systems of leieyrmphy nnd espirillHy
llm iiutoinnlir system.
Fourth.—' Tl . . . atie system of ifjliigrapliy.
il 1ms hoon prariirally conducted iii this cnimiry,
a system liv which llm t r&|i#i$|wgii of llm nms-
go is elVectetl in llm following nmnimi- :
I’nper is perforated nt llm transmitting imd by
leiniors employed for liml purpose, nnd is passed
;er a uieinllie drum in eoiiueelion with llm bill lory,
vnr Ibis drum ami resting upon the paper a me-
llie pen is pin . . also in eoiiueelion wit h llm
itlery. Tim paper thus perforaled is made to pass
■tween llm point of llm pen and llm drum, and
lieimver llm poinl of llm pen renrlms llm perfora-
on made in t he paper, il falls upon t he drum,
loses the eimiil, and sends a euneiit of electricity
ver llm line. Al the receiving end paper Is em-
loyed which has been saluraled with a suitable
Immieal solution ; upon this paper a uieinllie pen
lists, and when llm current of electricity pusses
hrongli the line, it passes into llm pen and discolors
lie elmmieal .solution with which the paper has
men satnralud, thus rreordimr the simed
by llm movenmnls of a noudleat, the receiving end,
but were not registered on chenimnl paper.
Fifth.— On the -till April, 1871, llm said Hi
executed nnd delivered to llm said George liar
Ion the deed, of which a ropy is annexed l(
eomphiinl and milked Kxhihil. H.
Sixth.— Tim said deed, when so executed
delicti . . contained in the hist, line of
first paragraph thereof the word “or" het
the words “ aiitoninfie telegraphy’’ and ‘
ehanieal printers”; bill the said word " or
written was somewhat hbirred, owing,— appa
hn-bi-in-l-ln+-<|uill— peii-wilh-whiclH
wil+eu—
Tlm said deed was recorded in the United 8
. . nl Ollice. May li, 1871.
Seventh.— At the tinmof theexeeutiim an
livery of said deed, tlm said Kdison had iuveii
combination of instruments for the purpos
transmitting two telegmphm messages in <>pj|
direelions at tlm same time, which lie called ‘
Double Transmitter.” A description and dm
of such eombinalion lire in evidence in Hie case
marked Hxhibit Q. Tbis-invenlion-is-applmal
uutnnud.ie-tohigra.phy.--
Eighth.— lie had also invented certain me-
0 ol said agreement applied to telegraphic in
intents which print the message at tins rcceivini
and some of these inslniments had also a
t time been invented by Mr. Kdison for the us
ho Gold and Slock Company of the city of Net
rk, and are t lit* instruments now in common ns
• said eubtpnny.
Ninth. — After the execution and delivery of
e said deed, and some time in the latter pari, of
e year 1871, or in the beginning of the year 1872.
e said Kdison declined to continue any longer the
isiness of manufacturing machinery and instrn-
ents as aforesaid in the sjgi|» hereinbefore men-
jneil, lint continued, in pursuance of|dht* said
igimil-iigreemonl-,— Kxhihit- A, nml-sdsn-iii pui-sii-
trrr-nf], Kxhibit li, to make, llie inventions dc-
t illed in the said . sotamil-'ag^iietuinls. The said
nrringlon furnished the capital and means for the
nrpose of enabling Kdison to make the said in-
•ntions, and the said inventions were made in ijie
top in Newark, mentioned in said-agreement. oL t<.
Twelfth.— The said Kdison, prior to
ingof said agreement of October 1st, 1871
Kxhibit A, had been endeavoring to invi
cess or method by which two messnges
transmitted in the sumo direction over
wire at the snine lime. _
1‘l'ior to tlift e.xeeiilion of said ilgreemen
ceived the itbtit that this result eoald be el
using an inurease and doeruase of tliu nun
the line to transmit one message, and by
reversal of its polarity to transmit the ol
sage ; bat lie laid not been able to devise
nation of machinery by which (lie process
made etrectual up to the rime of tlm exe
file said agreement. Ife continued his ex)
to -i lull -purpose in the shop in Newark Itti
lilhefore meutiimed, and-ns-early as- tlm-
iirriiiiged in his mind the process, means i
liimitioii-whic.h are embodied in theupplicu
lioneddn-l.lie-Cum|)ltiinL!tnd numbered.!)!).
Tenth.— Tlte said Ilm-rington ami his associates
'ter the execution of said agreement, Kxhibit A,
ad prior to the lirst, of May, 187-1, laid out and
xponded for the purpose of the experiments
foresaid by the sttid Kdison, the sum of about
xty thousand dollars (51(10,1111(1).
Thirteenth.— I n or tibotit 1872, be it
combination id instruments for tin; pi
Imnsiuittiug two messnges in opposite 1
ut the same lime by the process lastly bet
mentioned, of which cimibinstthm a draw
evidence in I he case ain't narked jhtpl
e of llie inventions aforesaid
ndtc'il l>y this elect ro-tuiignet fulls «iir, tints pin¬
ing a mutiliitiiin of tin* signal. Tin* j§|jj|i!i'«t|l
rivunees which have been iimphiyml I" pr.icut
i miitihitioii nf tins signal arc calhiil in I lm case
tg-lcaps," anil one nf snnh contrivances nf
ibinaliuns is ninbwlieil in the saiil drawing, cln-
c No. 1(5. The piirpiisn and nlijed i>r such cum?
il.ion, and the manner in which it effected t Ins
ill already stall'd of preventing such mitlihi-
i of signals at. the instant the polar?
id the current is reversed, is by
[iloying two magnets, one of which is (ra¬
sed only by tin; positive current, and the other
vhich is traversed only by I lie negative current ;
Imt when the polarity of the current is reversed
in the line, the current in its new direction, ini-
i lately passes into the electro-magnet which was
immediately before traversed by the current of
opposite polarity, and it bi'cotning immediately
gncli/.eil, continues to a It rant the armature,
ic.lt consequently does not fall off.
n order to render this device effective, it is
inssary that a .separate wire should lead from
ill buttery to cavil of the t wo magnets employed ;
1 for tins reason that particular devien or “bug-
p" is not applicable to the sending of two mes-
;es in the same direction ut the same time, he¬
ist; that involves tin; existence of only one wire
tween tin; battery and tile transmitting and the
‘uiviug stations.
Fifteenth.— 'Pile process which is described
nation lndcpcndeutiv of each other, :n
independent employment was Die ittvei
Kilistm.
Sixteenth— The stud lndependcntum)
constitutes the merit of the invention, dust
the twelfth finding, mid is the dislinguisl
tare which makes it ptaclieal : and tile p
method described in the twelfth Had
the first process or method by which, in
Deal conduct or business, two messages t
transmitted in tliu same direction and nl
time upon the smite wire.
Seventeenth. — Meside the experin
ready mentioned, the said Edison, during
1872, prosecuted at Iheshop lastly hereinbcl
Dotted, numerous other experiments in t
mission of messages in opposite direetim
same time, which process or method beg:
that year to lie called the Duplex Sy
method.
Eighteenth.— On the loth Pebrnnry
the request of William Orloiq Die Preside
Western Onion Telegraph Company, Dies
son presented to the said Orton n list ofsoi
inventions in Duplex Telegraphy which I
t heretofore made by I he said Kdison. A lis
inventions, with drawings of the same, h
deuce in the case and marked defendants
s
the said Edison and the said Orton, that, tint said
Edison should test in actual practice, upon tin? wires
of lint Western Union Telegraph Company, flip
inventions mentioned in said list : mid it was
run her agreed between the saiil Edison and the
said Orion verbally, that if the said tests should
prove Successful and the said inventions should
prove valuable, the said Edison would sell the
same to I lie said Orton at n price to lie agreed upon
between the parties, but- no mention was made at
the time said verbal agreement was entered into
of any method of fixing the price, in case the
parlies should not agree, and no price, in point of
fact, was ever agreed upon between (lie parlies for
any of said inventions.
Nineteenth.— No note or memorandum of
such contract was madoin writing; Ihebuyerdid not
receive any part of such goods or I he evidences of
such things in action, nor did lie at the time pay
any part of the purchase money for the same.
fl
which •was'' thereupon handed by said "Miller
to said Orton, wbich-eonmiuoiha-slnteitient-of-wdinh.
ho-ltrtd-rlnTre. A copy of such letter is in evidence
in the ease and marked Defendants' Exhibit 1 1.
Twenty -first.— After tliowtdt-iiigor-siiid-lpfter,
the said Edison made and signed eight, applications'
for patents for “Improvements in Duplex Tele,
gmphy," lettered from A to II respectively,- and
placed" the same ill the hands of Mnnn * Company,
patent solicitors, for the purpose of having them
tiled in the Patent Oliiee, and to obtain thereupon
letters patent, of the United States.
Twenty-second.— The. sttid Orton made no re¬
ply to the said letter of the 4th of April, 1878, ami
did not necupt the .proposition therein euntnined,
nor offer to Lite said Edison any price for the said in¬
ventions, of offer to lix such price by arbitration
or otherwise.
Twentieth.— After this interview with Orton,
said Edison went— biuik-tn-smd— sh«|i-4utd- made
Jb1 further experiments in various improvements in
U“ duplex telegraphy, lie t-iwn, through one Norman
■I' . C. Miller, obtained permission to go into the
[ ... . experimenting room or the Western Union Tele-
\ • graph Company to test his said inventions, lie
•r!V_' >took there instruments mid . . hinery from snid
'S>' V, u'v \th/ shop and connected the snme with tint wires of
, 'T' . ^ said company and tested upon said wires on
Twenty-third.—1 Thereupon, and on the Uthl
April, 187U, the sttid Edison made and delivered to , '
the said -Miller a powe'rof attorney to sell the Inven- f/ , (• •' '•
lions deserilied in the said eight . lipplicntious, wit \Syf V If...
otlier inventio'ns therein nicntidned, to t lie Western (.i • • ' ‘
Union Telegraplt'Cotn))iiny, itnil on the U-lth April, ' ,'j-
187H, left' this country for Europe. No ngreomonl ( /
was Hindu, however, between tile Western Union .
Telegraph Company and the said Miller, as attor¬
ney for snid Edison, and— noth Uig-litrlhor-wns-cvcr
doiie-l)etwet*n-tlle-wnid-Edison-mid-tlte-stiid-VVe.st-
erii-Union— IVIegriipli-Coiii]iany- ill regnrdtosiioh
Twenty-fourth.— Tltu said. Edison returned
to this country on the Unlit .dune, 187ti, mid there¬
upon renewed in the shop in Newark, mentioned in
tU«> said agreement, marked Exhibit A, ns I In; »liop
jerupiml by Edison and linger, his experiments in
llio systems of duplex transmission, and also in
tin; system known as “doable transmission/1 nr
lipiex: that is, tin; transmission of two messages
in the same direction, at tile same lime, am} over
tire same wire. In tin; fall of 187!! he had actually
set up in this shop, tire combination of instru¬
ments which effected this result. These instru¬
ments were arranged in substantially the same
combination as tlm! shown in tin; said application,
numbered 00.
Twenty-fifth,— It Iras been known ever since
the year 180.7, that any invention which was capa¬
ble of transmitting two messages in the same
direction, and at the same lime, could Ire duplexed
by the addition of the combinations of nmehiiiery
which were then known, and which have since be¬
come multiplied, for tire purpose of eirocling
transmission of massages in opposite directions,
at the same time. The object to be accomplished
in sndi duplex transmission is staled in tire said
Exhibit, iiiniihered 0, to wit : tire neutralization of
tile client, of lire out-going battery upon the re¬
ceiving instrument at tire sending stations. It was,
therefore, well known, that when u practical pro-
cess or method of Irmistiiilliug two messages in
tile same direction nt; tlru same time, should Ire in¬
vented, four messages could Ire transmitted upon
the same wire, attire same time, two in the same
direction, and two in opposite directions, and that
thus quudruplcx Imiismission would be elected.
Twenty-sixth.— Tim process or method dis.
fir reference to tire object to no accompli!
to the inventive principle or idea of Iho pr
moans employed in one are .the equivalent
in tire oilier.
Twenty-seventh.— It was well kim
your 1870, that the tension or intensit
magnetic current upon tlm lino could be
and diminished by either of tlm two-
means :
b'intt. — Hy interposing between till
and tlm line, an artificial resistin'
ed a rheostat. When this resistin'
let-posed, tile tension or intensity ol
rent upon tlm line is diminished ; v
withdrawn and the current passes
through tlm line, tlm tension or intens
current is increased.
Second. — By the addition to tin
employed for generating tlm mngii
rent upon tlm line of nil additional
of cells. Devices were well known 1
such additional cells could lie eonnei
or disconnected from this circuit. Hi
means are employed in Duplex No.
creasing and decreasing tlm current
line, mid the latter menus me enq.
Case 00. .
Kadi of these devices in- relation t
real ion described in tliiVjirst mid secoi
ol ease 00 is all equivalent for the otli
Twenty -eighth.— It wits also well
J870 that a change in tlm polarity or dil
the current upon the line could he effected
When tlio lV:t ttory having its positive*' end to
' (hi; lino was placed iuHrciilt, n positive nttm-nf
ivtis transmitted ; when llii! l»:it ttury having its
negative end lii Mm linn was placed in circuit, a
negative eiu'rolil was transmitted ; ami by al-
termituiy connecting onu or tin; other of these
batteries with the line, the? rosnii mentioned
was produced.
Seeimri. — Tim siinii! result could In* efTeetetl
. by connecting alternately the positive and m-g.
nlivi! polos of Miu same battery with I ho line ;
so that liy employing a dovico wliicii should
nhiingo alternately the connoclion of onu ond
of tho haltory and the other, there was altor-
- natoly n negative and a positive current trans¬
mitted.
The former of these devices is employed in
Duplex No. 1(5, the latter of these devices is
employed in Case' 0!), aiid-e'ac.h— of-lhem.- in
rcspeoMo-the invention iind-prrtcess described
in elaiihs-l-mid a of- the. said. Exhibit, was an
eipiivalent-for the other.
Twenty-ninth: -The said Edisoii'dhl not, be¬
tween the 2M April, : 187:!, and Hie 1st of .lime,
187-1, itVako any experiment whatever in lliu operat¬
ing rooms of the Western Union Telegmph Co., or
i.use their wire's for iiiiy purpose. On the loth Mav,
187-1, said Edison sent fo'tlie 'defendant. Prescott,
who was then' and has been ever since .lanuary 1st.
1870, the electrician of the Western Union Telegraph
Co., (lie letter marked, “ Defendant's Kxhil.it I -l."
After its receipt said Prescott submitted to tile
said Orton said letter, and he consented to the
acceptance of such proposition by said Prescott.
Aospeeilie authority to allow Hie said Prescott to
accept the same was conferred upon the said Orton.
' The defendant' Prescott, on the til's!' dnv of .June.
ceptal.ice of the proposition m t lie letter, Edison
Ihot’oiipHH came to see Prescott in the city of New
York.
Thirtieth. — Directly afterwards the said Edi¬
son re in rued to the experimenting room of the
Western Union Telegraph Company, and tested
upon its wires t he inventions aforesaid, and I he
same, and especially that described in case DO,
proved successful and valuable: and outlie 21st
.lime, 187-1, the said Edison drafted and submitted
to the said Prescott n memorandum of an agree¬
ment, which was put in evidence by the defendants
and marked Defendants' Exhibit -l-l. The same was
taken by said Edison and said Prescott to the oilier
of tliu defendants’ solicitors, and the agreement
marked Defendants' Exhibit till, was drawn by
such solicitors and was signed by the said Edison
and Prescott on the Dili .Inly, 187-1.
Thirty-first.— Del ween the said last two
mentioned dales, the said Edison was very lunch
pressed for money, to take up a mortgage which
was becoming due, upon the shop in Newark
lastly hereinbefore mentioned, and lie endeavored
to borrow of tin* said Orton, tile sum of ten thous¬
and dollars, ($10,0(11)). lie oli'ereil as- security to
(lie said Orton for such loan. Mil! machinery, tools
uml fixtures in the said shop. Tlie siiid Orton re¬
fused to 1 onu said . . . any sum, upon such se¬
curity of said machinery, tools and fixtures. Said
Edison thereupon oli'ereil to pledge to t his said
Orton what was spoken of between the parties, as
his interest in automatic.
Thirty-second.— Tile said Edison, at the
request of said Orton, in order to show to him
ml declined Id advise Mu' said Ol'lim In make
lan ii])on smdi security. Said Orton recommend
1 the said Kdison In elTed such loan from Ids
ssocintes in (he Aiilmiialic Company, mid 1m did
icrell poll eireel such l.nail.
Thirty-third.— Tim said l’re.scnii was imi,
i [mini nf fuel, a joint inventor of any of l lie ini-
rovcmenls descvitied in said Kxhihit lid.
Thirty-fourth.— Ininmdialely aflor tlu; exo-
nt inn of said agreement, Kxhihit tin. tlm said Kdi-
on exhibited t lie sanio to ono .losiaii C, Ueiir, who
as interested with tin; said Kdison and tin* said
hirringlon in the Anlninaliv Telegraph Coin pa nv
lid the Slid IteilV inimediatelv iiifonned the said
hirringlon of tlm fuel ot sncli agreement. There-
poll said Ilm-tinglon on the illli .Inly, wrote a let-
Jr hi tlie said Kdison, which is marked Kxhihjl
t. and sent the same to said K.lison early in tin-
loi-ninjr or .Inly loth h.v his son, C. B. Ilnrriitgtmt,
ie— also— inst mated— liis-siiiiL..soii— to— ink . .
aid Kdison, verlially, that. I lie said Kili-nn ' 'had
io right under his ngrtonumt^.with^’Tlnrringloii
o make the said agreement, 'Kxhihit HO; and the
aid C. B. llimjjijftotr'did so inrorni the said Kdi-
on aMjni-tiTnu of the delivery of sncli letter on
hermumi ng-of-tuly-l t >th.-1 874.
Thirty-sixth.— On tint lollt and tilth .Inti'
1878, the said Orton laid an interview \yilh sal
Hniir, at the of lice ot Hiram Barney, who^Vvas tl
attorney for said Harrington, wi! li-n--view-to tl
pnreliase-or-eertiHn-intereKtH-wtiiidi-wei'<»-owned-i
eontrolled-ln--t-lle-sidd-HeHtV
Thhdby-seventb. — I n,snhl. interview said lie:
. informed said Ortim.'tliiit Kdisnn's 'jiatihits Vui'd'i
velitions^were controlled hv said Harringloli. *t
v-iitua-of-tui-agiateinenl— prewionsl\‘-inade-l*etwe(
Thirty-eighth.— There was no ronsidomth
for the agreement Kxhihit 8tl, paid liy said l’n
colt. The patent fees mentioned in the fourth :i
tide of sail! agreement, were paid by the Wosle
Union Telegraph Company, and a small sum. n
exceeding in the aggregate, three hundred dolls
($80(1), was paid by said company for instrnmen
employed by said Kdison. in the second seriesof e
'puriincnts hereinbefore mentioned, and [trior to t
mill August, 1874. These instruments remaim
in tile possession of said company.
Thirty-ninth. — A fter the execution of tl
Thirty-fifth.— On the same
,1 i In- said iipplii-iilioiiM could -nut kovliilly. .
ulu in lltifiwil n*w» ot Kd.s.m mill Presc.ll,
4-llml -uitl l’rcscott was not a j"int invent. .r of
e inventions llievein described.
. . *-W-
iK-ftire-tnentioned, marked A and-li,-Kmai_Ui*i-
Fortieth.— In the course of the ennsnltntion
ill, id,,, be slated to said Prescott tin., there
as a coat tael on record between Harrington and
dison and asked him if Hint laid any hearing on
iij iwilum1 of tlie iijritMiinunl liehveuii liim uml vM\-
; Said l’resoott replied that tlie agreement re-
•rredlo laid reference only to antonmtie and had
othing to do with the subject matter of tlie agree-
lent between him and Udison. Tliereiiiam at
lie ie.|iiest id said Prescott and Udison. a new
ereemeiit was drafted by said Sorrell, which is (lie
greenient I'AlliUU P. of wliieli a copy is annexed
O the complaint. It was executed by the parties
o it about the tinth Aayrnst. 1871. and about that
late the said applications so drawn by Mr. Sorrel
vhieh are doseribod in the eomplaintand numbered
roni !)•! to 10(1 both inelnsivo, were tiled in tin'
United States Patent Ollico. Copies of the satne
ire in evidence in the cause and with the other
Hxhibits herein mentioned are to lie annexed here-
Forty-first.— After the making of said last
lentil cl „ it t i experimental sets of the
list riiinonts described in the application numbered
0. were const rneted tinder the direction of said
Udison. and tilaeed anon tlie lines of the Western
of-said-litlisonr caused ntinierons oilier sets of sm
inslriinients to lie eonslrnctod and ]ilaeed upon tl
lines of said company, and lias over since been n
ing the same, and now uses tlie same on about IV
Forty-second. — The Use of snob inventions
aforesaid, has upon tlie valuation fixed by tlie pi
position ICxhibil 2(1, hereinafter mentioned, nin
more than compensated said company for its oi
Forty-third.— In the fall of 1874, the si
Orton, on behalf of said Western Union Te
graph Company, entered into a negotiation w
one Daniel It. Craig, for the purchase of the li
and patents of the Automatic Telegraph Com pm
On the eighth day of October. 187-1. (lie said On
commenced an action in this Court against (feoi
Harrington, (ieorge Little, Thomas A. Kdison, I
Automatic Tcleginph Company and the Natim
Telegraph Company. In tin . niplaint in said
lion the contracts aforesaid marked Uxhibit A a
I-lxhiliil H are set out fully and in detail. On
about the tilth day of October. 187-1. notice of l
pendency of said suit and all other matters in si
notice referred to, was served upon the Westi
Union Telegraph Company. Such notice is marl
7,7. There was served at tile same lime upon s
Company a copy of the complaint in said last m
lioued suit, which is marked KH.
;> •Sl‘ll i'll l lie in vi>ii t ions in snid applies,
inns iiiimlii'ii'd finiii ill in pm, Mini in nun
pplienlion, . . . . IIS. Snell offer was in
'•riling, nnd suhserihcd hy them. and is in evidence
11 Ml;‘ nnd marked S*. Snid offer wns linnded
n snid Orion hy snid Kdison, nnd snid Orton there,
pon deelined snid offer.
Forty-sixth. —On ornlimit ilie.snd . . .
’* '• llli; snid Kdison linnded to snid Orion n n
"f prwft>4i;Knis in referenee III Ihe I
InHi Miii.1 Kdison wns willing I . rep. for sue
unions lastly liereinlieroro ineiilioiied. wliieli n
Porty-seventh.-Thc prop osii ions Hi, •rein
■"•"Hied were deelined l.y snid Orion, who llieic
""i wen! to Ghirngo.
.fX, .
. I tlielirst dnvof
lf 'vV- •••eyV- T/*1"1 Unrriiij'ioii, on hisnwu’he-
rnndiis i iloiiieyi,, fuel for snid Kdlson.exi-
wl iel', . IV'.'1:"'1 "'«• assignment
|..| ', ’Wiliexed In tile eoiiijdninl nnd
I • n,U Sni'1 |WM I- snid
1 ’’ *,s of l lie eoiisidernlion for sneli
, 7 |-1"' 'iny of .Innnnrv, 187/i. the
Forty-ninth.— On llm fourth dn.v of. Inin
187f>, the said Kdison executed nnd deliven;
snid Gould the irrevoenlile power of nllornu
which n copy is nnncxod to life eoniplninr
marked Kxhiiiil K, nnd the snnie wns record,
the I’niled Slnles I’nlenl Olliee .Innniiry *>,
Tile snid Gould, in eoiisidernlion of the exec
nnd delivery llierrnf to him. on Mini dny pn
snid Kdison I lie sum of ten thousand ill
tSIll.dOll), nnd on Hie sevenlli dny iff .Inimnry.
paid lo him the further sum ot tliree ihousnm
hundred did I nrs (.S'i.iidll). nnd on or nlioiil llm
Fiftieth. The snid Kdison, liy his nlto
dny Gould, on (lie sixth dny of .lununry,
exeeiiled nnd delivered lo Snmiiol K, Mills, III
signmeirt of the snid iiiveulioiis which is in
ilenee und innrked Kxhildi K, end the said ,\
on the eleventh day of .Iniiiuir.v. I87f>, in eonsii
lion of the sum of thirty thousand dollars, p
Ill'll), lo him paid liy the plaintiff, executed
delivered to the plaintiff fliu assignment of sni
Veil tin i is of which n copy is in evidence, nnd in
ed Kxhildi M.
Fifty-fourth..— I ht; invention described
lii'i* t claim in- application numbered ill) is
cable to automatic telegraphy, and the sai
been so applied by Said Edison in the cave
drawings in evidence marked respectively Zti
Fifty-fifth. — The invention described
second claim or case DO is applicable to ant
telegraphy and the same lias been so appl
shown in thedmwingin evidence marked Kxl
Fifty-Sixth.— The inventions described
applications numbered respectively (M, 07, a
and claimed therein are applicable to ant
telegraphy.
Fifty-seventh.—' The inventions desci
I be drawings numbered duplex lSand ln,wei
by said Edison prior to February In, IS7!t,
embodied in I he application numbered 01.
Fifty-eighth.— Tim invention describe
drawing, numbered duplex lit, was mi
hint prior to the lil'teenlh of Eebruar;
and is the same as tlml described in the i
tion numbered 07.
Fifty-ninth.—' The invention described
(crilii'd in tin* first claim of applicnliou numbered
Sixtieth. — At tin* ijjne .said in v<>n t ion was
aada, a di*vic*<* was known, railed llie Iwo peas,
vldcdi was used ia aalonuitie telegraphy, and
'■liirli performed the saaa* functions, ia reference
o that system, as the Img Imps hereinbefore men-
ioiied do ia referenee to tile Morse system of tele,
trophy. The positive eurreal is iraiisiiiilled
itnuigh one of these peas and the negative eiirreiit
hrottgh the other. Their points touch the surfi .
I the ehemically prepared paper, and move ia
i"rs parallel and very close to each other. When
reversal of the eurreal lakes place, tin- mark on
lie chemical paper changes from one* pamllcl line
» the other, hill lie* signal is not mutilated. Hi¬
ll istiliMing this device for the double relav shown
i duplex- in. i|,e combination of instruments there
ton a is available and useful for transmit tin;; two
"■ssa.ees in the same direction at the same time.
jinny employing llie same to transmit more than
three times as many words with the same wire, and
in the same time, as could he transmitted by tint
Morse system in use jirior to the inventions of said
Kdison hereinbefore mentioned.
Sixty-third.- The inventions described in the
applications numbered !)•!, !)? and in the tils t and
second claims of the application numbered no were
made by Tlmmas A. Kdison, with the assistance of
funds furnished by George IhirringKar or by him
and bis associates.
Sixty-Fourth.— None of tlm inventions lastly
heroin before mentioned, were made by said Kdison
as mi employe, of the Western Union Telegraph
Company, nor in its operating room, nor with the
aid of funds furnished by it.
Sixty-first.— All of till* inventions described in
« "t*l and second claims „r case ()!), and claimed
.... ' l|lu applicable to mechanical printers, and
u,ii,m T“,“-
ttve^drTo0 S-VS,um l)f 'Piadraplex
(Idi Jei.iiini* V, 11,-1 11 llll! illvulllions mentioned
f V? ll'“ "finplninl are eompoaeat parts,
Sixty-fifth.— None id tile inventions mention¬
ed in llie .sixty-fifth request were made with the
aid of the defendant Prescott.
Sixty-sixth. — There is no evidence t lint the de¬
fendants, the Western Union Telograjdt Company,
" I assisted to any extent $**
or George B. Pres
the sixty-lifth reqa
to nmking tin
• about tlm making of the inventions mentioned in
, or. did anything in referenee
except to test them.
Sixty-seventh. — The inventions described in
21
In tin.' Inst four chiims of tlio application number,
(id III), were made by Thomas A. Edison, with the
assistance of funds furnished by George Unrring-
ton, oi' by him and his associates.
Sixty-Eighth. -None of the inventions, lastly
herein before mentioned were made by saiil Edison
as an employe of the Western Union Tel, Co., nor
in its operating room, nor with the aid of funds fur
lushed by it.
Sixth-ninth.— None of the inventions men¬
tioned in the sixty-seventh request were made with
the aid of the defendant Prescott.
Seventieth.—' There is no evidence that, the
defendants, (lie Western Union Telegraph Company,
orlioorgu 15. Prescott, assisted to miy extent in or a-
bout the making of the inventions mentioned in the
sixty-seventh request, or did anythin}; in reference
to making the same except to lest them.
_Seventy.flrst.-Tl, ere is no evidence that
t defei'danls, I lie Western Union Telegraph Com,
in f,e ,ii * C|eol'Ko]1- I’l'uscott assisted to any extent
t , , 0U - ‘U "l!lkillS of tl'« inventions described
ively “ Pl’ ■ 0,18 "'"niierud J12 and 1 18 respect-
M'. 'Daniel, lummis & southeh,
Plaintiffs' Attorneys.
Supmw <&mt
Ok tiib Citv ok Nbw Youk.
against |
Kkoikih U. PlIKSUOTT, lltlll others.
General sketch of plaintiff's argu
ment.
I. — Udison is the source or title.
to Harrington certflili things,
ed ill Patent Oiiiee.
genunil agreement.
oontinued under it; and there
intents to llnrrrington.
7ti, Western Union seeks to et
[ilex.
id at that time about sending ir
one of the drawings shown in H
ton ill Pub. 187!), availablu to
■ f. fills Is not tlm one which dim
ill tlii) speoilicution mill drawing,
f). Tt is not n principle 1ml a method, ami is pat
eatable.
4. Whether it is tin;
no consequence n
!!(!0, fol. U02, p. 1170, To
inorhnnirnl printers, will
linilimi. Pp. 00, 100, fo
Colt v. Mass. Firearms Co., I Fisher,
hit. C. 108, 120.
Adams*. Kd wards, I Fisher, Pal. Ca. 8.
Wot iilnmn n. Stinipsmi, 8 Ibid, Ida.
Cvon if this is a principle, anil therefore not
patentable except as applied, anil iftho words
“ substantially as described,” are to lie
added, still the tpiestion recurs: What, is
substantially I
Phis brings ns to the doctrine of ” ituw/iunical
nrjllieiilriifs."
What is a lueehaniml equivalent, '! This
depends on native invention. In itself the
mechanical equivalent may be perfectly dif¬
ferent, from Hie thing Tor which it is substi¬
tuted. Vet, in relation to the; invention, it,
limy occupy the same position, and so be
a mechanical equivalent.
The Automatic transmitter and the Morse
transmitter are different. Vet, inasmuch as
the invention described in case 00 does not
line, then operates with its full intensity ami
ns n signal at L.
n till! drawing this buttery M B' is on the line
l sending a negative current. This passes over
line to the polarized relay C. This attracts the
mtnrc, S IP to the contact point A.
iow, when Iv is depressed, it closes the local cir-
I, in which it is situated. The current from the
il buttery SB pusses through the helix of S.
s n! tract's 8 L, and breaks the connection be¬
en the negative battery lit B1 and the line. The
litivecurrcnt from M B passed over the line and
a the polarized relay C. S h‘ is by this drawn
Ihe contact point A', thus closing the local cir-
t in which the sounder S1 is situated. This
us a signal.
.'his signal is not affected by the increase or di¬
lution of the intensity of the current, caused by
. action of the key K', been use the polarized re-
0 responds equally well to a weak ns to a
ong current.
sTo local circuit is shown on case II in connection
h the polarized relay, but this is an addition
.’ions to any one familiar with tin* art, and re-
iriug no invention.
EVERETT P. WHEELER,
IV Cmnixd/or l‘U>\
Superior <£(Utrf.
Summary of Plaintiff 's Case.
tin1 i>l:iiut ill', limn I'Mison lmd nif.'iinsl I bn;
*' A imli'ill Is sini|>ly lliu riulil li> lirlnuii hr
I'l.iiihci* .Minim
;;
“Tho iMiicluisor or it cliu«i> in iii'lioii. mil
" uliiilu liy tlit* mite ol’ Urn iimxiu frimi v
Lui'il Tliurlmv in Du vis r. Alls
soy, 2-17.
Iftilloiml mill aiipliml In vnscs nf :i In nut
cluisi'i* fur vnliit*.
SiitmlTw it. Ui'illy, fin N. y. i
Cults n. Giliilil, AT N. V. 221).
[ „ Disliui'iiii.i'li ‘r. Iiifjiiilmm. .17 ;
\ i reutt \l . fit- mar 5 V, tj ^
jj
Austin f>. Dye, .|(i N, Y„
('••) Uncording mils.
V' - 1 iturnming acts.
W Hlherwisc I In* rule is iidloxil.l,., Prior i„
I Impure, potior injure.
Iiuprnpi.silions Htmnt 1/ lunfA (1„ „oi apply n»
('••) Hccording net.
. Tin; Jlnrriiigiou iigreouieids
S. recording act.
V-. S. It. S., p. s
Hitli l'. S. Hint, 2n:t, Art July
i'll. Still, ji !!(i.
mil within I/'.
I. 1870,
lmt livery potent or liny interest therein slinll
.signnblo in low, by on instrument in writing:
Ho pntenlee or liis assigns or logoi represent:..
ni.t>, hi liliis monnor, grout mill oonvov on
sn !!ir"i r ,?l; llis |,lll,mt I" Hie will'll,.
l ed par of the Unite,! States; on, i soiii
uni' lit, groin, or eotiveymiee, slioli he void os
S" U‘‘1,"01" or mortgagee,
V. no , oeonsidonition, without notiee, unless
I' - oiilod in the potent ollieo within tl.reu
lif from llio dole thereof. ”
hu invention wns not in ,
ml on interest, in u potent.
, the right In it
("') 'H*“ conveyance to Prose,,
only, ii siili.ijij.ieotiy neipiirodtitle does not puss.
Jackson n. Stuqens, 10 Johns., 110.
Hlnnchurd v. Brooks, 12 Pick., <1" ‘
Sweet, ii. Brown, 12 Mote., 7o.
Otherwise if the eonveynnce lie of the loud
He lisul it rigid, title ond interest under the Hoi
ton agreement, and t his wos enough for then
mold with Prescott to operate upon.
It is said that the form of this ossignnicti
prescribed by the rules of the Potent Office,
Willy.
(ft.) Tlie act dues not nulhori/.e the Potent !
to prescribe forms of assignment.
(4.) Those rules allow the particular form
ployed, but, do not forbid any other.
!). It within the recording act. tint agreemo
was recorded in line Season.
A. Wluit is agreement H ?
it contains or.
(ft.) Thu blur was made with a hair in the.
Photographs show this distinctly. It is
the word just below, winch is also blurreil
(4.) The sentence is unintelligible without Li
Edison says no such tiling as an Automatic
aranlvn Mechanical Printer existed or was hen
()f lilt! llt.-IM
First.— 'f hay do expressly convoy Edison's in-
vcnrion.s “ for duplex ami (jHadruploS transmis¬
sions of intelligence at tin; same time upon one
and the same wife, known as quadruplex tele-
(jftipli (phiiutiirs proof, p. It), ful. 7(1; p. at), fol.
78, 7!); pp. S3, 3il, fols. !)(>, ill).
On defemlants’ theory this exception is repug¬
nant to the grants, If so, it is void.
ii Wiishb. Heal Est., tiO!) (tl ed.)
Second. — Hut if eonstrned with reference to the
rest or the deeds Ex. 0. ami I). the dillicnlty van¬
ishes. The words duplex and cpnulrnplex are used
as distinct throughout both. So true is this that
Ex. 1). was executed solely to supply ||,e omission
or the Word qundruplex in some places in <;
(plaintiffs proofs, p. 33, fol. 87).
he exception is of a particular application or
l,r '/itttr/nt/iltix. So far as quadruplex
is applicable to chemical lelegraphv, it passes bv
1 "* "xl"'^ lerms of the grant. Tlmapplinipfen of
duplex to chemical telegraphy is excepted I . .
Here was a patent Tor tin* application of duplex to
chemical telegraphy, granted to Harrington and
hilison, which it was not intended to convey.
Kx- N-> Pi'- phiiutiirs
pioofs. Ihis was conveyed by a subsequent as¬
signment. (Dort’s. Exhibits ji, i!3 fol. 13«).
is not^w iT*|,'i"M ,V|W ’"'t so the objection
ku," r,,‘- another reason, ir Herring-
i s tine to tlmsu inventions is established, ho
, (wo hirds ofthem in all their applications,
I' .' iV o lo 80,1 «r ai. y part,
niiea .SU IU.'"’ ,,!8U1'vi"S to ''in.self their ap-
: . - Ti,iswo„id pais
as .. p . , ' .,llu msui-vntion would operate
. . . . . .
Eittlolield v. Perry, 31 Wallace, 311.7,
213, 331. .
Fourteenth.
There should bo judgment for the plaintill ac¬
cording to the prayer of the complaint.
Evmtnrr P.. Wiikumjh,
Of Counsel.
McDan'iul, Lummis & SolJTlIKU,
Attorneys for Vlaintiff.
I
Jjfeiu ^iijjcjjioii <|mui
Tim Atlantic ami Pacific Tel- j
KitKA i'll Company, /
II i/(l in. si /
CJ i:< >i:<; i-: H. Pntiscorr, ami others.
Oil I hr \'Mh, iliu/ iif J ii nr 1S77.
Mr. Wheeler addressed I lie Court as follows :
Ma.v it please your Honor: It would he doing
less than justice to my associates and myself,
should I fail to thank the Court, for the patient
attention your Honor has bestowed upon this case.
You have allotted to counsel for summing up an
extension of lime, which the rules of the Court leave
to the discretion of the presiding judge, for which
we are all grateful.
When this ease was lirst moved 1 mentioned its
importance. That sense of its importance has not
been lessened. At that time I had not tlie assist¬
ance of the able counsel who have since come into
the case. Yet even now 1 feel that the responsi¬
bility of counsel is great. The interests involved
are very large; the passions which have been
aroused’ on one side, at least, have lent their
force to the defence. 1 have read that when
xVnjH.Icou, on (he eve of Mm battle of Ws.(,,,loo
P4; tlmwii up ill from „r
iiirosl of Smignios, he c.vcluiuMxl : “At lastllicii I
,WVH "k‘su .KnirH**!, in my wni-sj,." Wh,.„ ,|lis
f"i trial l thought | .Sinv
.1 .siiniln r c.vpri'SMoii i„ ,|1L. ru,,.N ()f ,|)t. |„.M]h||l|
niTay ol cmn.scl who appeared for Mm defendants.
U Mm nice is not always to Mm swirt, nor
Mm ha I Mu to Mm slnnig Ami as I'rovi.leiice
•sonml urns give Mm victory to ||,u just . c.-msu oi-ou
Mioush it be opposed by power nml wealth, so law-
yors know Mail it is not always Mm most learned
!''' i,.b,L‘'sl . . 'iint wills. Tim judge, rorgciiiiig
s.oi.ibli I'oasiili'i’s Ml. ,,S, ami . . . s ,i on j|s
■Bufom eiit<M’in<r mi ..... ... •
will ivi»Iv (< i Inn - K l,M I
. '.J • .
iiiaili! Ilia I tlm defendants haw Mm legal MM ""mol
e . ^skas***
csr‘£r:r'r- w,“u'«
•^”'1'- i'-ai a. . . . . .
l-uI v lLTlv'T. IT °r illb . . y
SSsfetfStLS . k"mr
! 0 I'lbM, S u,’ ‘.L es’ L"'l<* ‘ ‘i •' ' uoTbrinK 'o ur’.s!'. i"
tho wo , U leltU,'S "b'cb authenticate it to
ami made before thij inventions caino into being.
Counsel are embarrassed in considering sueh a
question by Mm law of real estate. The feudal sys¬
tem, which is at. tho foundation of all our real
estate law, required that the lord should invest the
tenant before witnesses with tho seisin of the land
conveyed. Hence an executory contract had no
Direct upon the title. Then tho Courts of Equity
came in and removed that difliculty, and gave spe¬
cific performance. It is true that our Revised Sta¬
tutes abolished the necessity for livery of seisin.
But they do not and can not change tho rules of
law that had grown out of the old doctrine. This
never had any application to personal property. I
was glad to see that my learned friends did not
attempt to argue that there could have been a
specific performance decreed of the verbal agree¬
ment with Orton. It was simply a contract to sell
certain personal property. The remedy for a
breach is in damages only, but the damages for the
breach of a cunt met for the sale of personal prop¬
erly are only the difference between tlm actual
price and the contract price. (McKniglit u. Dualop,
R N. Y.. o!17. ) When tho contract is silent as to
tlm price there can be no damages.
We have ns Mm basis of our title not a more
executory contract that Edison would sell for a
eorlain amount to he agreed upon, but a deed
which provides that such inventions ns experience
should demand should vest in Harrington and
Edison, mid that tlm right to sell should be in
Harrington alone. There is no sueh thing in this
oral agreement with Mr. Orton.
Tin? cases on this subject go to the extent of
holding that where words of conveyance in presenti-
are used in an assignment of inventions made
subsequently to tlm conveyance, equity will vest
tile title to these inventions in the assignee as soon
as they are made.
This point is argued fully by my learned
N'O iillogalions of I lie complaint. I .sul.mit here.
"Mil i, Comparison between 111... lllltW|li„„S
proofs, whirl, shows that this ol„„» ilk.' so
mniiy other charges, is not warranled by tlio ovl-
lei1.;,.. Jlul if it were, if your Honor please. it is
ecxporicncoof us nil lhat ti,« statements of
yit&ATSS:
|,l,'n,mi7" «'•* *li« Mllogalions Of a '
l,u >"'<10fs <'■> "-I in all respects aKr-o.
™:awtrl Hull in am homing Hi,.
. * .
if 'f-Mor pi,. as,, bufor,.
lias bun!,' a,,'l\'1*"i1"," 1 .°f R|'"nl importance,
•liil.iis !> ' ,l"8 Miveutiou described in
I H I! 1 1S"?' im i"rri..ge,nent of case
,„r If his '.oT'; "l!!r ""‘1 tl,o defendants the
ip,,,, .|,. i, n, ‘ • d >0 11,0 kr|'°",ul of tlucision, let
I C" ™ j iuirl of it it
1 1 N 1 t r j s
£**“»•« Zh ~„r
, .nu.i.. !:0.Uiil.n.lclio" <»r if mid should sunk
The Court, on the hen ring, held that the title
to ease 11 could not be set up as a defence lo this
suit, (pp. 1811-18.1, p. 211.1, fob 80,1 plaintillV proofs).
There is no evidence Hull it belongs to the plaintilf,
and counsel expressly stated Hint the defendants
disputed the plaintillV title lo it (p. 185, fob 7111).
Therefore this argument can have no force. Hut
assuming, for argument sake, that the Court should
consider I lie question and hold that wo are not fc
have claim 1 of case 05 because wo own case II, lei
thatalso be adjudicated. Fink nil lilt tun. bet the
judgment in Ibis case conclude the litigation as ti
nil mailers involved in it,
I propose lo stale the general facts in evidence anil
then consider more in detail tile scientific portion
of tin, case left to my care by my learned associates,
Tun Aoukismunt with Oirrox.
What are the real Tacts in this case I 1 Mippost
we are to bo guided in deciding Hint question bv n
consideration of what the probabilities are. W.
have on the otle side a great company, strong in it.
experience, strong ill the number of its members
a company which is one of the most powerful cor
positions in the world. I venture to say Hint then
is not a Peer or the Healm in Great Hritain, it
private life, tv I 1 ill s s much money, control,
as many men or wields as much power as the Pres
ident of this company. It is a necessary result ot
; , , • ii'.sniiL'U ui.u
lm only nmliomed the use „[ two or three expert-
immtnlscls for trial. But if m,ov (.ui1|(1 llfjl,
iMvomion freely, why should they make Imste to pav
'ime°" u1' "" T!‘Uy <U,i l’"1 111,11 "f from lime to
. , . Jl very clear to the Court l hut if
had not be, hi for the ],urchuse by Mr. Could ; if
Kdis'ou hud ^ 0,''<,n'H w,,nl- lll'»
would have been
would un-e beet, uuy utteu.pt touurept these
. ***■»
Is it not, eleur Unit this memorandum w.s void
vokedby hu'Jmvcr !!rnth!rn e v "1 r"'T\ '“"f
stile to Mills? •' h> f'"nW ti ml the
Tzizm,",Uh
“ " »««" K “t,»
itssoeiules will argue I hut ipteslum us fur us it i
one of fuel, But. 1 ask where is the authority f,
the necessity of notice I
There «re onlv three grounds for ii contention ii
to notice.
1. There ure many eases whore the owner of prc
party having certain evidences of ownership, put
these evidences in the hands of some agent, and it
disposes of the properly to a purchaser for vain,
without notice, ft. such case lie takes a good titl.
But the mere entrusting to an agent tliu posmst
ion of property, does1 not enable him to make
good title to it; even to a purchaser without notic
and for value. Carnal emplar.
2. Notice is also necessary to defeat the title ,
one who buys negotiable paper for value.
ii. Notice' is also necessary under the recordin
Wo must show a good title, of course, bat til
case has been argued upon tile assumption that w
must show more.
My learned friend argued that the ugreemea
Exhibits A and B, were not within the Unit,
States K wording Act.
Ho said they were merely executory contract
■ind there was no right, to record them ; and titer
fore the record was not notice. _ No one disputi
the latter proposition. But if it should be lie
tint Ihesi* n«mjements mu not within tlio Unite
States recording slots, whom is tl.e authority fi
putting on us (lie burden of proving notice i The
•ire but two suctions of tile Patent Law tlmt requi
consideration in this connection.
Imtlory cnnenl anil ] a polarized
m equivalent device fin- registering the ,
of tension, or intensity of l In- can
also I it' registered liy an :i |
io Further will oillior mi ehemirnllv
lias boon signed on the oilioi siilo dial
it tlio subjoin of a patent; llml Ibis applies
ill wo liavo shown was imply by Mr. Kit
lomical telegraphs, (Exhibit 1’), is not at al
nguinentof the lirsl and soooml olainis of
That is Ilia lirsl; dividing point between
ndants and tlio plainlill', Onr position is
lirsl (tlaiin stalos not a prinoiple lint a
or mol hod ; and is, tlioroforo, tlio sniijool i
nl. Wo liavo shown it was now ; and, t lint
'>»’ owners of it. Whntovor iniprovonii
liavo 1 loon mailo, whntovor spooilio. dev
in; contrived to carry out this protons, is
;rial on this branoli of my argument, lioci
laini to own tlio process or method itself,
icli evidence was taken for tlio purpose
•iny that ii was not new.nml that this cln
'la iin toa motliod, could not lio snslainod. Y
if romombors exhibit, U, and tlio (liny
nr,f,;i. mu, p. nor* fob ihot. most, n
nno ovidonco was taken as to tin; prill
out used by tlio Gold and Slock
|, soli llm polarized relay is used at the r
r tlio lino to move with great rapidity
op motion Tor bringing tlio typo into
diarized relay is far more rapid in it
mu tlio neutral relay ; a sudden cos-
lace in the rapidity of its movement, a
nl ion enables the neutral relay toad
nos the printing, (fill's, proofs p]
>o that, at the receiving end of the
mill these contrivances arc employe
mo message is transmitted at a tii
node of employment is entirely di
, I her words, the two means areempoi
irint on the paper a message; who
not hod they are employed separate y,
io worked independently of the other
dop one, and never use it, and yon Inn
■side working with entire uniformity a
That is the distinguishing principle of
Inr method : and that, all tin; witnosse
agree, is now. It needs no more Ilia
in this case over the ownership to
Honor that it is exceedingly valuable.
In Mr. farmer's testimony, (p.
proofs), lie says, in reference to t
“That is the lirsl time that that was
plished, not by new devices, but by i
of old devices, well known."
lull Which wits lilctl in Hut Court of Chancer,
New <l«*rsey by tin; AYesteiu Union Tel egbfpli C
puny. II is :t vi 'iri'd in that itill (p. 5;~, plsiiiit
evidence im relmt tor) : "There is limbing :
known which will bike tlu> place of or supply
invent ion embodied in tile npplicttlions made to
Valent- Otiice by tin' sniil Kdisnn n ml l’l'cscul
ufori'siiid.” That is undonliledly Irne. The ti
Molly In this ruse fully jnstilies mill sulistiinti
Hint allegation ; anil hence the extreme import:
of wind 1 mil now culling your Honor's alien
II is specially important to attend to this
reference In the date of this invention, Mr. Ed
testifies Ilia! lie laid this nielhnil in his uiinil as
backiis 1809, and possibly as far back as 18(1.7.
would not positively place it earlier Ilian I SOI),
early as IS09, lie laid in liismind tile process of u:
llie increaseanildecrea.se of the current, to trail}
one of the messages, using the change in polarit
transmit, the other (p. 228, fol. 8-1-1). He says
this particular combination which is embodiei
case 90, he invented in 1872. There was a great i
of cross firing about that, as your Honor will rein
her. AYlien I called his attention to sin a Hid
which ho made in the case, he said that, liaviiij,
freshed his memory by reference to it, he did
member that he had made the invention of
particular combination in 1872. (p. 281, fols.
Sfiil, pill's, proofs). As soon as he had in his n
the method by which this result was to bo ace
Not I grant, when lie got into his head
voulil be a good thing to do, to use the Ian-
I .lodge Lowell, but when he got into lm
general, the method and means he shi.nli
in tin . . that. Cases like Hanson, m
yor, 1 Kishor, 2.72, cited by the defcii anti
. itrovert this view. They hold that H i
ugh tiiinvalidate a patent that some one rlsi
lerlmeiiled and tried to make praclical th
ea, and failed. Edison did not rail,
o return in the argument, as to the ndditio
vords “substantially ns described." 1 do m
o sav that a claim can lawfully include a
on substantially different from that descnl
he sperilieulioli. lbil if you me. m. as ".
idowi.'d on the cross-axaniinalioii ol our wi
(p. 19(1, fob 7-1(1), when you add the worn
taut ially as described . . in In
u parlicnlarcoinbination of machinerj , <
re not, to be added. If, however, all the
mean, when added to the end <>r a genei
like case 99, that, there is set out in thespei
n one or the modes of carrying that princ.i
IV,, ct thev inn v be added to the claim withe
n il, even though I hey deploy ;i tl i il'fi oil ( eola¬
tion of machinery.*
Him- v. Dnrycc f I \V:i Uni-.., 5:11 j .fttVtgo (trier
' !’• “H is not within llio category of
in yon t ions which cuimisi in u m-w iipplifaiion
irtnin 11:1 filial foicos lo produce :i crrl ;i i n i-i>sult
liii-ll t hey had never been before applied. and
*•« "’huii once pointed out, required no in von.
jo foils! rur [ devices for its application,
^inventions pai-tahu of (he imtiire of ili.s-
rios either found out In- exiierintenl or tin* rr-
I i-liarKcd Hu* Jury ns follows :
you come to the mirlusiim tlml without Hu* water-h
i liioii! liL'iK'lldliil will, lli.-in), I hero si ill would Imvi- hoi
Urn w ddi would work iHuiolhdidly „„d ho worth wld
ho oh rollon foumlod ou ll, o woiordwlros Is vohudoss.-
aso, If it could not housed witluml the wuloriwlros.
loslruotlvo lo compim
hh Kd Ison's ijiindrii]>lo\
invention embodied |t,
Ions Hoes it eunnot ho
ennnot ho >sod without n . . denser or
«t shown In the spenltleulhm lli.mKl. it
proofsp. Jim f„|. |,v>|t.)
suit of n happy thought, which, when once i
pressed, is plnin to nil intelligent, persons, w
rotild point, out. nt onee many devices for maki
it died uni. Anyone enn perceive the dill'erei
of such n case from the invention of a lnltor savi
macliine, which is a mere conil)iniition or certi
nicclianical devices lo produce a desired linn
factiire in n cheaper or better ninnner."
Tlie distinction lluit I am arguing is fully si
ported by the decision of the Supreme Conn,
Corning r. harden, 1/i Mow. U. S. Rep. 2fi2.
p. 207, .1 ndge Crier says :
“A process, eo nomine, is not, made the snbj
of a patent in onr net of Congress. It is ineliui
under the general term 1 useful art.’ All art in
require one or more processes or nmchines,
order to produeo tt certain result; in- miinnfact.il
Tin* term mneliine includes every mechanical
vice or combination of i 1 l 1 | -s, and
vices to perform some function and produce a ci
tain idled or result. Hut. when the result or cl!'
is produced by chemical action, or by the opera!
or application of some element or pouter of ntUtt
or of olio substance to another; sudi mod
methods or operations, are railed proves,
A new process is generally the result, of disoove
ii nmehiuc of invention. The arts of tanning, d
ing, making water proof cloth, vulcanizing in
ruliber, smelting ores, and numerous others,
usually curried ou by processes, ns distinguisl
from machines. One may discover a new i
useful improvement in the art, irrespective of i
particular form of machinery or mechanical dev
And, another may invent n labor-saving mac!
bv which this (munition or process may lie i
I should give t'» those words, 1110
ist met ion already referred to so as
intilV to a particular combination i
ilrivnnees, still lit** ijiuwtioii recur'
tilling which tin* (!onrl will give
alistiiatially tis described." 'Vital
ly !" This brings as to the clodri
Is. Wlial :m e(|uivaleiil is . . .
i aatiirc of I lie invention. For
•u thesi: inventions in litis tippli
Ija'cspective of the minor tint
nury . in regard to which 1 «l<> no
• anything— Inking the gCmer.il fur
eat ion stated in the second claim "•
jro must iii! two transmitting inst
re mnstlt.) m.taiH prnvidudjhy whicl
t by the one Ir.unmitting instrnn
1,V li ; fellow. and bv which
''bat altoreil I lie prupoi-t ions of tin, dilicreii
nd miciod another which proved to lio heno
ho whole. •) udf'o Shepiey says, p. :i(t-|, •
ml a lire chloride whh'h'the defendant usos^
recess a known chemical equivalent for t lit-
a chloridu which tho complainant uses;
liumii'iil equivalent in every respect and fdi
urpose, lint an eijuimlenl I'or thin / mrtial
■xx' aonlrilnitinj; to produce the .snmu comp
f matter by substantially thesume chemical
i combination with tin? oilier ingredients
induct.” The Court held Hint the object
i be accomplished ju relation to tile invenlb
Mile new combination was an infi'inm-mont
‘l aitlioujLfh it had an additional e
Inch was of itself heuclicial, and which was
e old one. There is a recent, case in 2 Ol.li
Ives c.v. Hamilton— a sawmill cast;. The qu
is in re},'a rd to (lie adjustment of Hie saw
iffinal adjustment of the saw which is
If CIIITellt IS l»l!W(rihjil III! <1111! Side of Ilia pal'l
a, iiiul Ilia signal liy Ilia positive etmvnl mi
ier; ami Ilia eye of Ilia pars! ill reading
ssagu (lisaavai's Ilia break between Ilia two
al I i lias, and pa, ads Ilia signal as if it ware (
nans from ona pnmllal to Ilia at liar, when i
ill Ilia break llial lliara is (pp. all), 53(1, >
Ui. Wheeh-r. — ■Tin* testimony was vary dear
sil I vo rpani all iiiip witnesses, and lias mil bean (
(lidail; llial llial was Ilia only aired which (if
gnal 0. was used in aainbinaliaii with Ilia ah
I pa pep) would ha produced in Ilia signal by
ai'sal of (the current (]>. (M3, p, 7-lii fnl. ‘jit
"I hep words, that t his use of the two |
scipiivalenl In I ha use of I ha ling |pnp. Now, I
cs away entirely the argument which was a
Ilia cross-examination or Mr. d’ Inrreville, l
all'acl of Ilia bug-trap [shown in case III),
somewhat slow down the speed of recepti
i do not nsa that liiig-imp ; we use a siibslili
showed by the witness, that if, inslead or |
g the chemical paper in the sliiinl circuit, as
il in V, it is hitched on In the and of ilia li
IMind pul in Ilia place of the Morse sunn
the local circuit, that it could not work guic
n Ilia bug-trap would work. Ha , showed!
bag-trap (Claim d. of case 5)0. ) worked bceans
i slower than the possible speed of trnnsniissi
Hull while it was well adapted lo the Mi
isinission, it would not ba so wall ndaplud
■•iniitiu transmission. But we siibslilnto Tor
''Ira Pi 'I* dine 01), ona which was known
I, and which performs, in regard to I lia ahem
!Vi<‘ I'uitrf.— Tint bis!
ng about a long line I
Ur. Whuchtr. — No, it
■d, and wa have show
illy further limn fr
it ils great use is on <
uk to I’liiladaliihia
J)upLcy H\'ip
*l li**n?r«i
,mi> iliifrliuii. al I In; same
I ilia limit this invention,
'mi, , lining. ami wliiah,
ill Ilia roiidiliolts of ilia
ttempted la Kill'll in my
I there warn inventions
it, which were iavanlail prior In lha negotiation
In, Id with Mr. Orton, anil which, llierafore, ara mil'
properly. I submit a drawing In illnslrala the ar¬
gument’ whleli I have now ilia honor of addressing
In ilia Oonrl. It is simply |intling on paper in n
a I'orni, sansilila to Ilia eye, Ilia argument, that wt*
had the right lo make nsu in this rasa of lha doe-
Irinaol' eipiivtdotlls • and thill if wa ronld sillisli-
t nia, for example, for lha ling-1 rap shown in du¬
plex III. anolhar hng-trnp, wliiah was known nt lha
time and used at tin; lima', wa had lha right to do
The Court. — Yon i afar to tho two pans !
Mr. ir/icfifw.-Yas, sir ; that is all that is sill >-
stitnlud in the drawing I submit. 1 liava pul.
thu two puns in plana of tin; ranaivar A H, wliiah
is shown ill rasa II, mid which is shown in
duplex 1(1. Wa liava all the alamanls in tha
evidence. The duviee was known, and it was ap¬
plicable to produce this result. I’rof. Karniar les-
' tilled that Ilia only dillictilty in using this duplex
10, and in the nsu of ansa H, to transmit two
massages in tha same direction is, that Ilia I mg-
trap shown in nasu II, and in duplex III, is not
available at the same end of tha lineal wliiah lha
— (§M3f —
li
f,'i I? r
ip. l’tof. KsiniKT so leslilies. (]>«>ris
p. :i77, !l*8, ful.s. I m:i8.)
till! essential element in iiase Of*, which is np
to dunhti) sending, to wit. tiniiMiiillim
slind messages over one wire. at. the siinic
mu iipornting by reversal of I lie bn I ter)
anil Mu; other l»j- increasing or •lecreasin;.
Tout, front tin; battery is in ease II and it
10. It is nlso nppliitalili) to duplex sending,
ni in I huso growings. Tim bug-trap in then:
■ pplicable to ilonldu sending, Iml tin- clieni
1(5*1 tup of llio Mvo puns is applicable ti
sunding. Wo have shown, lliond'oi'o. tint
•mini pint of ensn till wns in urtitnl being of
li of I'Vbrilfiry, 1870, prior to the negotiation
r. Orton, and therefore it was oar property,
ml wo especially want in this raso is tin
and right to nso t lie invention shown in
10 and tho invention shown in duplexes III,
lii. (live its those and we have till that is
spending intteli time Upon in this ease,
re other tilings which arc valuable, bill they
it I lie same value that these have; they are
bin; more than that, they are especially
bio to a li t ulna I ic telegraphy, and duplex 10
re honelieinlly applicable to that Ilian to (lie
lystem at the Unit) it enme into being ; t here-
been mi) Harrington's under the deed of
, 1871, and once his, no net of Kdison’sronhl
dm of it.
a very remarkable faeii that tho inven-
liieli d’lnfreville Instilled were applicable to
CITY of jYFW YORK.
is rhiiniod from Kdison through (,Vnrgi! Hiirrlng-
Ion, sis nllnrnoy in fuel for ICdjsi . ,d through tlio
dood of Kdison hipisolr, of dnnuniy I I87n° The
subsequent llicsno <mn voyil In porfi-.*! thi- lomEj'
mid eqnMde lillu in the plnintilf „re „ol in t||8.
piitn between the pnrtios.
Therefore il is only llni owtluniy invocnlion of
i-oliul in n Court of Kqtiify by n piirl.v having n
legiil til lu or nn eqniinblo rigid to rostriiin wrong,
doors i linn ineninberiiig Mini liilo or interior in-
ivilli snoli right. h
11 is nlso not in dispute Mint. Kdison enlerod into
tlio employment of inventing oorlnin improve . its
ill lelegrnphy and telegraphic nppnmtns with Jlnr-
I'liigton, m October, 1870, in Now, irk, Now .lorsov
"lder n pnilnership nrmngomon! sot forth in the
.'ontrnel by ilooil, dnlod Oclolior 1st. 187(1. I i’l-dn-
ilf’s Kxhibit “ A. j”
Tlio oporntivo words ,d' Mini doo.l. so fnrns Miov
ooni lieoossnry hero In In; oxnmined, nro :
• rllat |1|U.S»‘,I l'lirlios nsnhovo . . .
, f„Vrk !!T r" "ml lls '»a mi fm t u '
H-i.s al ml kinds ol niaciuiiurv, iiislninnnds took
; brntcny nndennls mid nil mwl*
/ cijji.iretl.Jij/ /hi ntirioits «/' Mrr/ni///,,,,
tho snid pnrtios to ho inloroslod ns owners in nil
gpr&s? serr
to nny direct or indiroot inlorost in, nnd to nnv in
This pnrlnei
nnd ncknowld
til si dny of l )i
Oil tlio -llli
hil.il “JVM in
llnrtlnglnii, n
Mint :
fi'x/ii/) x hi ill ciiiiliiiin
' //riirx/faitf Ihr lii'xl i
toy of April, 1871, [PI
other dood wns ninth* h
corded in (lie pnloilt ol
“ able considerations to mo in hand paid and in
lurt bet' consideration of curtain c'"'ui>""|- . I
“ stipulations to be fnllilled by George Harrington
“of Washington, District, of 'Columbia did stiim-
“ late and agree to invent and construct for the
“ said Harrington full and complete sets id' instrn-
“ meats and machinery that should snceessrullv
economically dcvelope into lnaclical use the
“ Little or other system of automaticor fast ‘system
‘ of telegraphy, and subsequent!!' to improve and
perfect such instruments and niachinerv be add
|| tag thereto from time to time, such furtlmr'inveu-
tions as experience should demand, and mynbil-
|| ity as an inventor and electrician might, suggest
and permit; and furthermore, to prepare or
cause to be prepared, the necessary descriptive
pnpeis, the models and drawings reipiisilo and
k psiteiils for all such inven-
‘ eats to he'f- !^,Ut l11”/)’11 ‘‘".‘l ''•J^'nmlVho1 p!a-
!u L lhM|ed to tlie said Harrington and my-
proportionate interest of two-thirds
‘ ,vl„a L "r,,"fl"’" ,'""1 ?IUi tliird to myself, the
awioic ro Do under rliu solo cant ml of said liar-
< Ml,1"!* disposed of by liim foroiirnmlmil
, Odu-bt in tlie projiorlmnsiiereinbel'oro recited in
such nuinnor and to such oxteut ns lie the said
I rniTiiigton should dum ulvisnhh with pmvm
‘ « r tniusfer and convey llm whole or any
. l’'ut '.'t t|ll! I'ftlils and titles in and to any or ail
1 iiwfno mvom“),,s »nd improvements, as'also of
1 e s i d TI •!’,.?! , 1LT ng ,('s *,,isi,.'K tlierefrom ; and
<,,ii i? 1,1,11 ln«t"n having Hiiihrull y fnllilled
‘into byhim.e,VL,I“"l,il ,u"1 sl 'P'tLit ions entered
Tlion follows the words of the assignment :
| mom hand paid, I, Thomas A. Edison of’,
cst of a|] in\ said inventions, incliidiii'r Hum,.;,,
all my inventions of meclinnieal oreopvnt"-
nhntsouu of ir| mventions ami ibijjrovcmenls
“ made or to be made, and of all the patents that
“ may be issued therefor, that are or may be ap¬
plicable to automatic telegraphy or lnecluti ll
“ printers.”
Then comes a recital of tlio coil idol ition, and i
full power of attorney, irrevocable, “with power
“ of substitution to Harrington to sell, transfer and
“ convoy all my right, title and interest in and to
“ any aiid all my said inventions and improve-
“ nients thereto, whether made or to be made, to
“ sell, transfer and convey all my rights by patent
“ or otherwise, execute in full any or all necessary
“ papers and documents requisite for the transfer
“ of title, mid to invest in other parties full and
“legal ownership therein; lioroby divesting my-
“ self of, and investing him. the said Harrington,
» with all tlie powors necessary in the premises,
“ fully and completely to carry out tlie purposes
“ ami intentions herein set forth.”
It is not understood to he in controversy that, in
the absence of other and intervening rights all the
title to any of tho inventions which are covered by
these two deeds, passed into the phiintilTs by
several mesne assignments and transfers set forth
in their exhibits. Tlie contest in this part of the
ease is whether the inventions of Kdison claimed
in tlie bill were covered by tho operative words and
provisions of these instruments. _
Tlie plaintiffs also claim by a second line of title,
that, is, Thomas A. Edison, by bis deed of January
•1, 187G, duly acknowledged before a notary public,
and recorded in tlie patent' office, January 5, 1875,
constituted for a valuable consideration Jay
Gould, ills attorney, irrevocable to transfer and
assign the inventions of Edison, which aye now tlie
subject of controversy, and that said Gould,
through mesne assignments conveyed tho same to
plaintiffs ; and that Harrington for himself, and
acting as tlie attorney of Edison, confirmed tins
title in Gould, by a deed dated March 9, 1875, re¬
corded in tlie patent office March 30, 1875.
It will not be denied that if Edison, on tlie 4th
day of January, 1875, had a right to convey the
inventions in controversy, Hint by these deeds the
title to them passed to tho plaintiffs.
It becomes my province now to discuss in a gen¬
eral way tho questions of tho effect of these deeds
of what passed by them ; tho objections made to
thcm. and to their effect in passing title into tho
plamtiils of the inventions in dispute.
I am relieved from a more i 1 te examination
of the deeds, because the words of tho deed and
their oga effect are so fully, critically and
alytically treated in the argnmont by my asso
ciate Mr. Latkouk, t|1Ilt ldo not feel capable of
adding anything, and fear I should only succeed
in detracting from what he has so well said.
in a Seneral way, tho con-
ract deed of partnership of Edison, with Barring-
ton, of October, 1870, made them partners in a
business of inventors and manufacturers of all
of machinery and instnimonts, and all and
whatsoever apparatus which may bo “ required by
the various systems of telegraphy,” and also mam
ifactmeis of such other machinery and things, tho
m.inuf.ictuio of which may be offered to or ob¬
tained by them, and that they should bo deemed
owners in all original inventions, and improvo-
eitW oT thenf' Pm'°,mSeCl w * «*». «
lnteiosts of the iirm, except what might bo required
stock contl'nct. *nd under that
U"'.ae f’ notto invent !lny ‘king which
^ 1 !lt0 ‘ls,lI,lst ""tomatio telegraphy, nor to
sell to any other pirty whatever, any invention or
improvement which may be useful or desired in
automalie telegraphy; with a further provision
l,lt f“i ‘i"y ongmal inventions or improvements
that Edison should make other than such as mm
he suggested or arise grow current work in the
manufacture, there should be allowed him -i
loasonablo and proper compensation by the
partners, in addition to his share in the partner¬
ship profits.
This last provision seems to me quite material,
because it pre-supposos that outside of the “cur¬
rent work” of tho partnership, Edison’s inventivo
powers might be engaged in any inventions ho
might see tit to make. Such inventions might not
be even within the province of electricity or tele¬
graphy, and in every case oven, the product should
belong to the partnership, and ho receive from
tho partnership a just and reasonable compensation
therefor, other than his designated share of the
profits as partner.
I claim, therefore, that if there could have been
any doubt before the insertion of this provision,
that the whole mind and effective inventive powers,
and all the conception of Edison had not been
agreed to be given to the partnership, and if the prior
words of description might ingeniously be constru-
ed into a limitation of his inventions to a particu¬
lar subject, yet this last provision gives the part¬
nership the whole of Edison’s inventive powers to
be paid for outside of the profit, by a just com¬
pensation to be settled in a manner provided, to
wit, by arbitration.
Therefore, Edison is restrained from inventing
anything for anybody but the partnership, or sell¬
ing anything which was the product of his inven¬
tive genius to any other than the partnership by
words which operate to convey all to the iirm.
Now, Mr. Edison testifies, that he had the idea of
double transmission of electric signals over one
wire at the same' time in the same directio.ii, as
early ns 1800, [see plaintiff’s testimony, p. 227,
folio 840.]
“Q. After you had made this invention of the
“double transmitter which has been shown you
“here, which I think you said was in 1800, state,
“whether or not you continued any further ex-
“ periments in the direction of double tmnsmis-
“ sion 1 A. Yes, sir.
“Q. How long did you continue those expori-
' ‘mental
“A. Ever since the ditto of this invention.
“Q. Where were you engnged at (lie time of
“ tins invention of the double transmitter?
“A. In Cincinnati, Ohio.
“Q. In wlmt employment !
“A. The Western Onion Telegraph.
“ Q. And you have been engaged as an electrician
“nntt inventor, ever since then !
“A. Yes, sir.”
Again, p. 238, folio 843. :
“ The Court.— The proper question is, when, as
“near as you can state, did you first conceive the
“idea of the possibility of transmission by this
“ combination of these two modus ?
“ Witness.— Between 180ii and 1872, sometime.
“Q. Can you fix it more nearly than that?
“A. No, sir; I have hnd the idea so long, but
“could not make it practical.”
A possible criticism on the construction of this
deed may bo, if Edison had this system in his
mind why did not the words “duplex system of
telegraphy” appear as well as the “automatic
system,” and thus save the trouble wo are now put
to, of interpretation 1 The answer is two-fold :
First. Edison testifies that the word “duplex ”
was not invented, to his knowledge, until between
187.1 and 1872, when Stearns invented it for his
system. . (See plaintiffs' evidence, Edison, p. 201.)
There being then no name to it, and Edison sup¬
posing it to be an improvement in the speed of
telegraphing over one wire, naturally included it
under the words “ other fast systems of tele-
yraphy .”
Second.— It lias also been said that duplex tele¬
graphy, being a system, did not pass by either of
the deeds from Edison to Harrington, because no¬
thing but apparatus passed by the deeds ; and that
Edison was to invent nothing but apparat us, instru¬
ments, and tools, and that he could not invent a
So far as this argument is directed to these in¬
ventions, which relate to transmitting from oppo-
ison never claimed to have invented a system of
duplex telegraphy, strictly speaking. All his in¬
ventions, which relate to transmission from oppo-
site directions, are merely improvements in combi¬
nations of machinery relating to an existing system.
It the Court will turn to the deed of the 0th of
duly, drawn by our learned friend of Portor, Low-
roy & Soren, it will liixl the recital to be “Whereas
Edison and Prescott are joint inventors of the tele¬
graphic apparatus,” described as “ magnetic duplex
nppnrntus.”
Now. “apparatus,” and instruments, wo submit,
are the same thing, whether they are found in the
h> Harrington or the deed to Prescott, espe¬
cially as the same deed to Prescott says that
mouols should !>u nmtlc of (ho improvements.”
Ihif so far ns (he first claim of case 09 is con-
corned it lms been shown by my associate, Mr.
, ' heeler, that it describes a. system or process.
I Here is nothing in the deeds of October 1, 1870
and April -I, 1871, to limit the scope of any invem
Inins made under them.
Exhibit A (plaintiff's pronto, p. II, fob <jm
speaks of “aft original inventions or improve’
meiits.” At. p. 12, fob 44, the expression is “ any
inventions or unproven, outs made or to be made by
him, Edison.) So also p. 13, fob 4(1, 48.
Exhibit B (plnintiir.s proofs, p, to, fob 03), after
mentioning instruments and machinery, goes on to
include “such further inventions as experience
should demand and my ability as an inventor ami
electr'ciau might suggest to permit.” On p. 1.7,
lol (.0, the language is, “all and whatsoever of my
inventions or improvements made or to be made
and ol all the patents that may be issued therefor’
that are or may be applicable to automatic tele-
giaphy or mechanical printers.”
Now then, Edison having in his mind this matter
ot double transmission, and having been engaged
0 'In in I ill's
Im subjer
I l>o miuli
ml l linl a,
;"<“i iix3 until IK72,
Im ih'i'il of |K7ii, oi
r,!'1 ,,f 'ij'i'il -I. IS7I.
UMlionUInnnlbiuof this proposition’
lions aiv made by the defendants- •
*inrt, llm oilu stated |»v Mr i
testimony, ooijj .
1( "mre nmniiil nrimmvim.m
..I’1 iinil sale, flio ill!,.
I*,v "m im.,,1 ns }*.)}„* |,y l)l(.
brought inn, pmoito
, ll,<1 ‘ (IIISS l,v i
mii. urn. hereafter f0 |j0 ,.()nsi'|
if, was ])||t .n • '
"ftor (I,,. ,|ll(), flius,, '
. . . . N.
|!* . . ""
so ns |„ \„s( .. liii'n' r l 1,1 '""••"■inoqniiv,
.
'losign, ns well iis"lio V;,: t,lu ill I In, I,
town placed i,n its puch's,;,! ,llls
Amts and stored J his mimV’lvit, ltwl "1>
Insfory Is fo I,’' ,,1' / '-'". "Pon "'hid,
discovery, invention or
Iml0w1, 1110 81,1 "«"•»« Of 11,0 first mMa ,,,
tho Constitution gives power to Congress to es-
tnljlish mi exclusive light in tho inventor or
discoverer for inventions mid discoveries in the
useful arts. Why may not tho inventor assign
(his right, /. e. property, as well as any other
right!
Ono having an idea of any in, proven, eat in the
arts ought always to ho allowed to hypothecate or
soil it, lo got. file means of perfecting and carrying
it out. Any other rale of law would he against
public policy, by practically preventing the inven¬
tive ideas of ingenious, bat poor men, from being
perfected, so as to become capable of being se¬
cured us in, “exclusive light.”
it is not poreoivod why n man cannot carry on
tho Oms/viixx of hmentmi for tho benefit of another,
as well as any other business, and a fortiori , for
the benullt of himself and another. It would seem
that a man having a talent for invention, has a
righfc fo employ, use and sell* that talent at liis
pleasure.
I am aware Unit tho strict rule of the common
law refused to sanction the sale of anything not
capable of muuuul delivery ; or as it is sometimes
termed, “tilings not then in existence;” but such
lias never been the rule here, especially since the
law establishing an exclusive right in inventions.
Certainly not in equity.
True, again, that without tho patent laws, an in¬
vention could not ho salable because it never could
ripen or lie perfected into property. But under our
patent laws, which give a property in inventions to
bo secured to tlm inventor according to tho provis¬
ions of those laws, property in inventions before
they are patented, lias uniformly been field, not
only to bo possible but assignable, and the Courts
have given to tho assignee such property, when
tile same lias become in a condition to be se¬
cured by letters patent, mid so are tho authorities.
JV H',uuns case upon this subject is :
Nesmith, clal., us. Culvert.
1 Woodbury niul Minot, p’. «j .
The learned Justice of the Supreme Court sit-
,,W,n «'o llwt «l«,,ilt, held (hut where an h vent r
■ c“'t
theassignee01 tllU'“ 'X'U"1;5t’ !t lil,u lliUl l»'-“-sod lo
lias same doctrine was also allirmod in this cir
that over s»,°, * l!°sl' "l^gl't and learned Judges
Emrta W.**. Coiillticittitl wu,a o.
4 Fisher, p, 28.
such “tie of’ an Jvas held, that notice of
nive , „ ' ,,1V0Ilt,0,‘ «><*>«.ft,,r lo i,o made
notice to 11, I 'T t’1' °r n,,iu01, of 11 ''oni] mi mm
<-oiuV!wy, and bound ihu title
in flmo2of° 80,1 fUrl,,W i,1V0,1,i0"s> "'iw'hill lined
The Kuilrond us. Trimble.
10 Wnllace, p. 307.
This "'as a case at law, and the easo could nor
mo bj said letters patent, and also all ri-dit title
ytormt which may be secured
alterations or Improvements on ih» r
“time to time.” tl'osame from
Upon this the Court say :
“Thu language employed is verv i t T, ,
. had hun 'issiu d, ind "ll
1 which might, bo issued thereafter.” The entire in¬
i'- ventions, and alterations and iniprovonients, and
|| all patents relating thereto, ivhonsoever issued, and
the extent of tlio territory speciiiod are within the
M scope of the language employed. In support of
| this opinion the Court cites the case of
|| Giaylur us. Wilder,
|j 10 Howard, 477.
[ And concludes its opinion in the, following words :
ii “ Without in effect overruling that adjudication,
I “ ivo cannot hold that Trimble had not a letjul title
I “ under the extended, as well as the original
| “patent.”
| Now an extension of a patent ivas a matter in
I which a party under the law as it then stood, could
| have no right until the extension is granted ; yet
I the Court held that the inventor may assign the
j legal title by deed to an extended patent, by grant-
1 . ing to a purchaser the possibility of its being ox-
4 tended.
| ft is hardly profitable to follow the discus-
| slim oh this point further. We cite as our cou-
j elusive mlthority the acts and law of our opponents
/ themselves, which are certainly good as against
them in the nature of an estoppel, for the theory of
one lino of their title is, that on February Oth,
1870, they bought, by parol voiilrad, these inven¬
tions of Edison, not thou perfected and put in
. form, iu consideration of giving him facilities by
which to purfect them and make them operative.
If then wu are right, and by Ins contract and
I- deed those inventions passed to Harrington, then
fS our title is indisputable.
| Certainly so, unless ours is an equitable title
I only, and then unless another and greater equity
| lias arison in the defendants, by a perfected, pur-
/ chase for a valuable consideration, without notice
& of any title or interest in Harrington in the invon-
Jj tious in controversy, before they became the pro-
porty of Hie pin in I ills, who look Ihem without
"nts’0 " H'e"' nf,siS"0|,°r »'•>• lillo In i ha defend!
II; limy ho tisofii) |o observe Imre' Hun: if lf;i iriff---
S ,tn" in *ll<‘s,‘ in' imii ions, if h”s
4 . . . .
II: would soui" lo lie convoiiionf; I liniofoi-o before
(liHoiiwing I lie defendant's lillo, first lo discuss llio
‘Is1 Mier limy hail , | f'l, '■
ll"vH"1Ti"w,on '""I (if wo mo
, f t us H'“‘ H'« ««» wns in Harrington), ll.on
“ ■•"'fl'iii'o lliuioiifior would not
1)0 inmlnhlo, so Hull Hio ijusilily of ,|io lillo Hie
.ixmnh!!", M1> "l tl,0"“",lvuH "uul1 “•* Hirrher
SlgJ ,liM,!,,ssi0,> «’« mot in limine will. |.|„,
AVI." C does llio lnw s administered ii Courier
e<i"ily require to a Ifeut a }>u rciiuistir with notice
mi oulsiunding Hu,,, or incumbrance noon . .
^ ->■ n.,«.«i.„io„ for, or on si, io i V I” no
olliu qucsiion (ms huon mom thoroughly mid hillv
l)IW.tod,„Om,tsorK(1ni,yH,,,,,H,is.‘
" u ,n“ willing for llio purpose of this trim to
H.ssiin.0 llio doctrine lo lie Mint laid down liv Glimr
t.olior Bunt, (4 Cnm.nontnrius, p. 202), Mint'" wlmt-
“nmnt1>"rSr M,,HM anioiinis in Jud--
“ becomes a dul v'ns’h1 ^ H°’ 4.lV
requisite lnct by llio exorcise of ordinary dill!
“gence and understanding.” ‘
«,Mlrv“U In tniflU 10 !',ul n P|l,'t,l|usor upon in-
Kditiiui of :i5t rj 11,1(1
“ is 'mo <1 ^i iu | ku 't h V'' ’’"i 11 1,U1'S011 "},on Inquiry
"00“ "w,to0- 1 t«Ul '«> when a man lias sullicent;
15
“informal ion to load him to a fact lio shall bo
“demand cognizant of it,”
A«ain, Powell on mortgages (Kdi. 1828, vol, 2,
pp. SOI, 209): ' - ’
“ Presumptive notice, wliiali is a oonolusion'of
“ law, (when, by tho exorcise of common dim
1 gence wilhoul, any extraordinary procaulion,
“a mail eannol, bill acquire a knowledge of a
‘‘ Tact) that lie has notice thereof, although
“no actual proof of iiotico bo exhibited against
“him.”
Tit oio am two kinds of notice ;
Cons/rne/iee whore llio law requires a purchaser
to take notice uf a recorded instrument nlloct"'"'
liis title ”
cos surrounding the title tho purchaser know in
fact or might to have learned by inquiry all that, ho
could have learned if lie laid sought to know. Both
kinds of notice equally bind the purchaser, his duty
being unido out.
Wo deduce tho law, therefore, to be,
Mrs/,. — That there is a duty upon a purchaser if
he knows anything which leads him to suspect that
thoro might beany inoiimbrnnco or charge upon the
title of wlmt ho is about to purchase, Hint' lie must
make inquiry. If in such case ho fails to make in¬
quiry, ho is as chargeable in legal contemplation
as il lie knew all ho could ascortaiu b3r inquiry.
Dart on Vendors, 88, chap. Ilf, sec. I.
Ibottson vs. Bhondcs, 2 Vein. 554.
Doe vs. Pork, ns, il Term It. 740.
Wood vs. Cooper, 1 Car. & lv., 045.
Hunt ing in. Hicks, 2 Dov & Bat , Gh. 130. i'
Bussell vs. Petrie, 10 B. Monroe, 180.
Price vs. McDonald, 1 Maryland, 403.
Hudson vs. Warner, 2 Harris & Gill, 415.
Williamson os. Brown, 15 i\r. V., OdltfCLre Ln.
Baudall os. Silvortliorno, 4 Barr., 173. ‘
Baker vs. Bliss, 30 N. Y.ylO.
(AfttsO
fl/rCt. (a/vIw Utlkec^ U I
Second.— It ]le chooses to inquire of the vendor
i alone, that will not excuse him.
a#eKWn^<MK,!"llt »*• Tngeisoll, 7. Hum, 340
fa*** i /. Me /^™S0“’8 18 P- F- Smith’ 212.
ViV wto, Ih^UjLT 011 '„elK nI'S’ ol'- Ifi> WB- r>< 1>- 780.
Mj eto d.v. Hammond, !J() Betiv., 4i)ij,
Price es. McDonald, «W #///«•«,
liussel vs. Purtil^loB. Monroe, 180
Third,— It there is n deed on record of which the
purchaser ls hound to take notico reciting nnv
other deed which may complicate the'title/but not
recorded, lie is hound by notico of that deed as if it
r<!L‘onl,,tl> °r could ascertain by inquiry
Lo Nbvo »*. Lo Novo, 1 Vos., 04.
Chadwich vs. Turner, 84 Be'av 084
Isove ns Pennell, 2 Hem. & Mill., no.
M ormald vs. Maitland, Of! L ,T cli on
He Alien, 1 I. It., Eq., 'm U ^ 00-
1 rice iw. McDonald, 1 Maryland, -108
ir 'r* i° vs. Grreenhow, 2 Pa'ttan & Heath
Sv cv w-Mi,ldmt’ 20 wn. '
"P'ey M. Withorow, 7 Walts
Hittlelield vs. Perry, ai WalLSSI-o
die invention as in "in V r S] f
actually exist at the lime of the f1”' v <ll(1 "ot
I cl tl of it o r“* lec<,rding of the
notice to bo taken of it when m '1,1 i V™1."''™1
inventhm?^ Z'Teg!"" ml ““
when the patent is granted H e il- patullt
of the invention is tl, ’ ° "SS,S1 ""cut
n ' M0" '1 lbti ""tannient or the
VU^'
J7
in this
qnirod to issue Mie ]iatont to the assignee.
Such is the practice of the patent ollice,
shown by Hie decision of the commissioner ij
very case, whereby he ordered the patents to issue
to Edison and Prescott, as the assignees of Edison,
I localise ol a recorded assignment, under the con¬
tract of August lllth, made before the applications
ever were presented. Our view I ha I an assignment
ol improvements thereafter to bo made, is proper to
be recorded in the patent ollice, for Iho purpose of
notice, and that ell'eet is given to such assignments
by the courts, is fully sustained by the recent case
ol Littlefield vs. Perry, SI Wallace, 205.
fourth.— I f in the judgment of the Court any cir¬
cumstances of complication of title were known
which ought to put a man of ordinary prudence
upon inquiry in matters of high concern, a pur-
cliasei failing to make inquiry in such a case 1°
bound by the charge upon the" title as fully us if
he knew its untire extent.
Por illustration : If a purchaser finds a tenant in L cu*ais„A
possession of land, whom lie in good faith supposes ^ f
is only a tenant at will, or for years, if lie fail to MQhsxJltlvl,
make inquiry, ids title acquired for a valuable con- (Ljr /. n l
Side ratten will be postponed to a contract of pur-
clia.se between the tenant and owner, of which the £, V$Lf
purchaser might have learned if he had made in¬
quiry and been answered truly.
Merritt, el id. ns. Lambert, el tils.
Ilolfnian’s (N. Y.) Oh. It,, 100.
Briggs vs. Taylor, 28 Vt. 1S7.
Agra Bank vs. Barry, P. L. H, 0 Cli., 128.
••ones ns. Williams, 24 Bear. 47.
Ware o.v. Lord Egniont, 4 DeU.M. &(J. 400
Shaw vs. Spencer, 100 .Mass, 3S2.
Earl Brook vs. Bulkeluy, 2 Yes. 498.
Blaisdoll vs. Stevens, 10 Yt, 180.
Vide, Williamson ns. Brown, 15 N. Y.
Grimstone vs. Carter, 3 Paige, 421.
unrecorded doi'd implied by the word “ oovo.i'u'ifs - >
no!, gave Harrington „ continuing ,-iK|lt
,,,,,,d ''"'■‘‘"•'iitts r«„„ ; . ;
Z;Z' A'“” * r 1,1 — - “
"nt “ *“«»" xs?
requisite |„ obtain palm,, sCull sni'l, r "
oh •ion,rOV'-,IL‘,1,s’ "'hil''1 «*»> to ill Si'l ™
“ •' ,o1 Hl"T'"»ton and Edison, (|l(, w|10,‘ , , ]
>•«'» Kills id in Z T; mvV.,'uw"
i t M , I \ , ,V . M ‘ a,.‘ in
poivor and disposal by llin-. ing, ^ 1,10 ii0,u
r SETS
^ ““'f ‘llu™ w«h assigned and'U ovl toHnS";.
volitions, Vuibuliug^dM^^^ Knid in-
si: & ««%,, ■■ zzsti
That, is In aim ,i„. . .
mu-iLsr. in nil ot Jus said inventions, and all the
pa touts already issued, or that might bo issued, or
might be applied for, and all improvements made,
or to be made, that are improvements, applicable to
‘ automatic teley raphy mechanical printers”
It is now claimed that the last phrnso is am¬
biguous for the want of the word, “or” at the
time m the record, and it is testified to
that to the mind of one versed in telegraphy it con¬
veys no dolinito meaning.
Be that so, then Hie purchaser of anv invention
ol ad i son would lie put upon file Inquiry, and it
was his duty to have asked to have seen the deeds
both1 unrecorded and recorded, and learn the mean-
ingof such ambiguous phrase. If the purchaser
tailed to do that, lie was then bound by all that is
implied by flint phrase. Thu fact of this nmbignilv
alone should have put an ordinarily prudent and
careful man versed ill telegraphy upon his in¬
quiry before he dealt with Edison in relation to
inventions in the telegraphic art, perfected subse¬
quently to this deed.
Stopping right here, if wo are correct in our
propositions of law, is it possible to say that such
a deed would not put a person, especially a
person, who as Mr. Orton says he was not,
“versed in the science of Electricity, nor very
well versed in Automatic telegraphy,” upon in¬
quiry?
Now, tlie great stress of this case on the part of
the defendants is, that the duplex and quadruples
apparatus, and the Court will remember they are
but instruments, are not applicable to automatic
telegraphy ; and they place reliance on the fact
i oopyiag pmi
iivd Hit) ‘
shows flint the .sentence roq
IIiivinK no doubt, upon inspection of the instru¬
ment and the l I t „ ] 1 c 1 gu I which was
shown to the Court for illustration, that the Court
will find that the word “or” was in (he original,
I do not stop to argue that question, hut lo call
the attention of the Court from that very rant to
the necessity Torn prudent man making a bar¬
gain in a matter of high Concern, to make the pro¬
per inquiry of the owner, when lie would have
found the fact to Ire as (lie Court will linil if.
lint again it is claimed by the defendants, Hint
these inventions of Edison's in dispute are not
applicable to thuautoiiiatic system of Little, which
was the one in use by Harrington, and much, vcrv
I" neb evidence t l loi g | ,d great learning
in the telegraphic art and electrical science, lias
been spent in endeavoring to prove on the one side,
Old in controverting the fact on the other, that
hese inventions are applicable to that svsten of
mtoimilic telegraphy.
Keferring to the very able argunienl or mv n.sso-
lale, Mr. Wheeler, upon that Ini . . of the ease
do n;" tomb 11 «• nil, hue, use, if in the judgment
' mo Court, the feet can he established that
hese inventions are applicable lo the Little system
41,0,1 amt ttt'Stiineut is sullieient
o establish that point. Hut holding another
tew ol wlmt it is necessary for the Court to find
]H.n this part of the case in order to sustain the
laimill s rights, I liog leave to suggest ‘Mm law lo
e, that unless the Court find nliirnintivelv upon
oy,,lo,luo J’J lllls Hint In any event under no
os, slide combination, by menus of no skill orinven-
ye faculty in mini, can the inventions in dispute ho
odeuppl, cable -to any Little or other system of
ist telegraphy, then this part, of the case is with
to plaiiitiif, lioeau.so the words of the recorded
f “ "!'0 , ,!,vu,lti',,ls "‘at may be applicable to an-
Turning back to the deed of October Ist, 1870,
find in the lir.st clause of that; deed, that Edison
to make and invent “ all inxlmmenlx that mu
he ret/ulrerl by the mrimut xyxtemx of telegraphy.
And in the fifth section of that deed he hinds bin
self not te invent uuy machinery that wtu, mu,
tr.vrn against automatic telegraphy, nor to eonve
to any parties wlmtover any '‘invention, or in
provemenl that way he netful or t/exiretl in awb
malic telegraphy."
The two deeds being conveyances of the sum
subject mutter, are, by a familiar rule of eoustnu
tion, to be construed together, mid reading the om
the law requires inquiry to bo made of the otlie
tlie one to explain Ibe other.
Tile Court, to find for the defendants oil this poin
must declare that the disputed inventions tut mi oil
matin useful or desirable in mitomnlie telegraphy
Hint they cannot militate against automatic toll
grnphy. Tlio Court will observe that the pnrtii
were contracting for the whole future of autonuiti
telegraphy, 'ami all possible inventions Mud in lit
future Edison could make which would cither mi
itule against, he useful in or desirable for, the owi
ors ol the automatic telegraph, or which might: b
applicable to automatic or other fast system tell
grnphy, however they may he made applicable, b;
what, invention they could ho made applicable, c
in whatever manner they could bo madoapplionbl
by the advance of the telegraphic art, and oluctricr
science.
I submit Mint the words are broad enough to cove:
all that. Can the Court judicially say Mint those it
struments are not desired in nutomatic telegraphy
Our contest in this case answers that fact. Can Ml
Court say that they can never he made useful i
automatic, telegraphy as adjuncts, aids or guard
to that system ’t ■ Ho witnesssays that, in this caso
Tlioroforo I can lay aside tile question in my vioi
of the law, whether they are yet made applicable o
not. Tf they may lie made so, then they pass bv
those duals. Can the (Joui't say that these inven¬
tions in dispute will not militate against nntomatio
telegraphy Why, the .answer springs to the lips
atonee; Mr. Orton relies upon these inventions ns
inatiVUi,POr"> 0t Wlll llUU to <:"lsl‘ ll,l! *'iv«l auto-
Unt I am further relieved from a dismission oven
of these questions heoanso inquiry as to thedeed of
contract between Harrington and Edison, of Oc.to-
Ir' eV’,1870, "’ou,<l lmv,J •sll0"'n the defendants, in
the fifth section thereof, that for any original invon-
tions or improyoments that Edison may make oilier
than such as are suggested by the “current work”
of the manufactory, he was to be allowed and paid
by the firm a reasonable and proper compensation
therefor, irrespective of the prolife of the partner¬
ship, and it will be seen there that all the inventions
that he could make or originate, were to bo tlio
property or the linn, a two-third interest in which
would be in Harrington.
Was the Western Union not Infrino--
tag as to title?
As we have already seen it to be unquestioned
law [Empire 11 . M. Co. ox. Continental VV. M
Go.,,«?„ xitpm} that notice to the agent or prim
upal oliicer of a company purchasing will bo
notice to the company, binding them as to a eon-
tract for an invention to be thereafter made, it will
ue convenient to examine the case at bar and lind
0 t lint arc st ccs ttund 1 (I j tl0I1
and purchase ot these inventions, or as they are
called m the books, the “surroundings” of the
purchase or transaction, came to the knowledge of
them with' °r 1,1,0 Clef0I“l,lUt colnI>*my, nirecting
1 1|‘101 PuttlnffH n inquiry be-
foie the title to thorn was perfected, if over, in the
(lufenaunt company.
rile o Hi cers of the company who are to be
alfectod with notice are Prescott, the electrician,
and Orton, the president and general manager, and
their solicitors and agents.
The time when tile title of this invention is
claimed to have been closed in the defendant com¬
pany, was either the 1 Oth of December, 187-1, when
what is called llm “preliminary receipt” was
given, or the Doth of the same, ami it is immaterial
for this purpose which date we take.
•I lissome if to be familiar law flint if at any
lime before the purchaser claiming to be one for a
valuable consideration, has finally closed his pur¬
chase and acquired his title, notice conies to him,
or he is put upon his inquiry, which is notice in
law, that he cannot thereafter go on and take any
further step to acquire title more than he could
acquire such title if lie had been affected with such
notice before his negotiations began. The pur¬
chaser must stop no inxlanli when affected with
notice, or take all the consequences or the charge
upon the title which lie is purchasing, and look to
a court of equity or law to reimburse himself for
(in// no/io n (/i/ urn nlrriu/j/ mrnfa, by damages to bo
recovered from his vendor.
Tn this case, fortunately, they would be com¬
paratively little, and the case finds that the only
money overpaid to Edison has been tendered back.
Without recurring to special pages of the testi¬
mony, which being heard by your Honor is
fresh, doubtless, in your mind, the “surround¬
ings” of this purchase, known to Orton and Pres¬
cott, in fact will be as follows :
Orton knew, prior to the year 1872, Hint Edison
was engaged in inventions relating to the trans¬
mission of telegraphic signals. This information
came to him' from conversations with Edison in the
Gold and Stock Company’s oflice, and also from
Orton’s connection with the Gold and Stock Com¬
pany, it having long been substantially in the
control of the Western Union, whose president and
manager he was. He also knew that Edison was
.miim.ii to ms!! luster system limn t lie ^Tin-se svs-
tm>. "’Ohio,-,, Union. Orton w ns X
eiiSt.Ketl in nil, . iting l„ perleet Urn i,,
ple.v system, to n.ld In tlm 'r
ti'tiiism issioit of signals l.y I lie .M.irse svste!., over
Mu* \Vusl orn Union wires. *
Orton, on llm witness slmul, testilieil Mmi „i>OIIt
!;f slxlll1 "r. l,'ebrunry, |87!l, Kdison rail-
oil upon him, .saying in snhsfiinee tlmt I . .
n,!,ku uninoviiiimnls upon Steam's duplex. )lll(|
show od Inni i, huge number of cliiieriiiiis tit
| "p'eNos whirl, ho hail invent I „d desired
lio might Iinve the use „f th, w ■
su. how they would work on long circuits •
and Mint, lie limn mado a jinrol run Iran with Kdi-
. oi to go on and put; his duplexes in practice, and
ir limy were siiorossful limy should I, . mm th
ptopoily °f ,lm Western Union Conipanv ,,po„
imo to bo agreed upon or established, and lid son
wires.* ’’ IUUl VM '«•» »p<.,i,.s
otlr Tf,,siiry ^ «•« «««d0 inquiry
o h i n his arrangement wilh Hnrrin--
on ; as to the interest of Harrington in his invou-
suS.. ;,":f
knee, p. 202, folio 897.] V ,S el"'
“Q. Bid you [Orton] ever have any conversation
“derived, that lie was engaged in doing work fo
“ Uni automatic people, in' which concern Mr. Hsu
“ rington was prominent, but I do not recall any
“ tiling that was conveyed to mo as specific on tlm
“subject.”
“Q. .Learning that lie was doing work l'or th
“automatic people, and a servant in the employ
“mold of them, did you hire him away from then
“ without milking inquiries how tills rolntioi
“stood,”
(Objected to, and withdrawn.)
“Q. You knew there wore some sort of businesi
“relations, did you not, existing bootween Marring
“ ton and Kdison in 1871), in regard to inventions
“and improvements or telegraphy?”
“ A. I knew that lidlsou had been ungaged, and,
“perhaps, was then engaged in making apparatus
“of his inventions for the use of tlm automata
“ people ; but precisely what his relation to the
“automatic concern or Mr. Harrington was, I don't
“ think 1 knew.”
Orton knew before Kdison came to him that la
had invented till apparatus to bo used in duplex
telegraphs, for lie says in his letter to Miller ol
February Oth : “ Say to Kdison that I am ready to
trade for his duplex.”
On tlm 4th of April, 1S78, Orton was informed
that Kdison had linished his experiments on the
Western Union lines. [&» Defentlanl's Exhibit
«. 1
Orton gave Kdison no further directions, and on
the 2i!d of April, by a letter of attorney, through
Miller, Kdison offered to convey to the Western
Union all his interest in eight duplex telegraphic
mi tents, of which Orton look no notice. On the
same (lay, April Slid, Edison sailed for Europe to
develop tlte automatic syslom for the, British Gov-
ermnont, to bu absent indelinitelv, and that was
known to Orion, although in f«et‘ Edison refurnmi
the 25th ot Jane. IS?;). |>SV.r (vxUmmnj ,/ Murray,
l lamlijl s rvJmHing enith-mv /i. no. |
'l’hero is no further evidi-nee giving eonversalions
or contracts but ween Orton or Edison upon tele¬
graphic anamlions.
bate in the rail of 1872, a method of double
transmission one way (ease 00) was shown to
(roneni) Miorl, a Siipnriiitnnriojit. in Muj Wont-
era Union I’elegraph Company, Air. Olmml-
ler, a, director, and Afr. Brown, another di-
J'eetor, in Edison’s shop at Newark, where they
went by the invitation of Afr. lioiil’, the Treasurer
and manager or the Automatic Oiani.anv, and the
rej iresen ta live of Afr. Harrington. '
The next evidence that we have id' any conversa¬
tion or negotiation between Edison and the officers
of the Western Union is the letter of Edison of Alay
10, 187-1, making Prescott an offer to give him one-
half of his inventions if lie will get for him the facili¬
ties ol the Western Union to test them
Then we have the fact that Prescott knew where
Edison was at work, for Prescott telegraphed him
at Newark to come over, and he did come and bring
1 s 11 t t *> it i „li inventions and tried
them experimentally on the Western Union lines
Orton returned Troni Europe to his office the 20tli
ot Alay, and shortly after this letter of Edison’s
was shown him by Prescott, who asked him if he
should make the arrangement propo ed, of takimr
one-half of Edison’s inventions, and become jointly
interested 'vith l1*1"' ,0 which Orton consented
if Prescott would have a deed carefully pre
1 ^ ( s 1 11 1 ** t ory reliable ‘in his
Then we have, on tl.e 21st day of June, the inter¬
lined agreement given by Edison to Prescott, which
recites that the invention of the double transmis¬
sion (or case HO) had been made by Edison, and
also that signals could be, in the same manner and
at the same time returned, which is the quadruplex,
had then been invented by Edison. This was be¬
fore a single instrument had been furnished to Edi¬
son by Prescott, or the Western Union. See Phelps’
Test., Dert. Ev., p. 807, fol. I, 255, “ date, June 25,
187-1.”
We have the fact curiously interesting when
taken in connection with the date of the interlined
agreement off Juno 21st, whereby Edison conveys
his inventions to Prescott, that prior to the 15th
of June, Orton called upon Hiram Barney to bring
him in conference with IteiH’, the managing agent,
representing the various forms ot ownership in the
property of the telegraphic systems, improvements,
inventions of Edison’s belonging to the men who
Orton, in his testimony, designates as “ the nuto-
lleilf tustilies nncontradieted that Hiram Barney
had long been the counsel of Air. George Harring¬
ton. And Orton tustilies [De/'eiukuitx' lusUmony
p. 2011, J'o/in 840], that he knew Edison had been
ungaged (as early as February, I87H), “ and per-
“ haps was then engaged in making apparatus of
“ his invention for the use of the automatic people,
.*• but preuixelt/ what his relation to the automatic
“ concern, or Mr. Harrington was, I do not think I
In pursuance of this request to Orton, Barney
brought Koill: and him together in his oillce on the
15th of June, on which occasion the interview con¬
tinued on the 10th. Air. Huilf testifies that liu ex¬
plained spec! tolly the title of Harrington in the
Edison invention. This testimony of Beilf’s Orton
specilically conlirms for he says, Deft. Test. p.
15-1: “I asked Air. lieitV to state how the titles
were held, and who were the owners of the Automa¬
tic. Then there were the Edison Group of Patents,
that he explained to me were not owned by The
Automatic Company. They were held by George
'l,,! IKltonlH. ill view
, ill Hint interview, mill „f
i s,li'1 lll,!.v wui'u worth
I ll llllll I Wanted | |H. in (oirjvu „|(,
'll S JKII.MIt.s fill' III,.. AlltolllUlic.”
.1 I'l'll'l! I'll’ till! !■;< 1 istill I,||||.,||S
a' wi"Ur'''''lll!l'1 you tvmtlod i
;s '"volition or iii<- Antoi.mM
"'Pl'wirs Hml Mr. Orton, ,
iu Hilo lo tliu “Edison’s g
. :;?■ . . : .
"M K"i,r li'Kl KOI,-
, | ,"' ‘ll,;s"n N “«ri'»«ij» of iiiviMiiioiis,” n tin,,
b' ilolVtTr'^' 1,0 ,in . Kl
11 1, r ol in 'niid il] "|l|!!’|t I1- 1 «•«««> held,
ill n„t , .1 i l‘1"1,J"sl 1 '"it I i"io —
.. i i ’ ,'«itf|wr«.w iii is ion, „r
win, Edi‘:T:i '! "'u"1'1 "oi ,|0
ills I Ita s ,n|,ll,S',! U WIS "0l V,!,,y l"li"-
II cm . , v ! ?■ "i 11 wirermiv
Hum H, lmm! ,r'J" ' ?n r°n"’ 0l'l<"> lmd
'm !, r f 10> of Edison, bin; „o
ing for; Wns it not the (lundrupiox and the du
flex, which wns nil Hint lie; valued ? (Jim llu; Coni'
say Hint liu wns not pm upon impiiry ns to Hai ring
ton’s tilde* ut Hint lnonumt, when ho wns specially
informed of it by Hoi IV, ns ho admits 1
Oi'ton snys liu broke oil' nil nugotintiem heonusi
thoy nskod him 8500, Ono in cash or stock. We
next line! him on tho 8ldi of July, negotiating witl:
Edison about a lion on Edison’s automatic invention
Edison nulls on him for ulonn of 810,000, stntingliii
nooossitios, mid oll'ors lo hypothooiito his shop, took
and fixtures nod personal property at Newark
Phol ps lmd by Present!; boon personally sent to New
nrk lo oxnmino thorn and report upon their value
Orton refuses to loan him any money on Hint secu¬
rity. Orton snys, “What olso have you got?”
Edison snys, “ I will hypothecate my interest in
the automatic.” Orton says, “ What is it? Go
“over and got Hie papers, and bring them to-
“morrow.” (See Edison's robutling testimony,
p. 00, fob 200.) Edison wont to get the paper, which
would show his interest in the automatic, brought
that paper, and showed it lo somebody in the
oilico ; he forgets whom. As lie was negotiating with
Orton, and Orton lmd sent him for the paper, to
whom would 1m show it? Why, of course, to
Orton. Can the Court doubt on that point? He
then testifies Hint lie was sent to the linn of Porter,
Lowry, Soren & Stone to get a legal opinion as lo
his title. That Jtr. Prescott went with him, as lie
believes ; but at any rate lie went with a paper.
What paper was Hint? Tt was a paper showing
''V ■"“J™ mnsnreimiillorenl which of « how
lIociI.s it wns. hither if submitted to the “law de
parhncnt of the Western Union Telegraph ” would
’ , "!l'!".l!l",s "-|lil'11 w»nl«l Im notice
'f"l'osllnifonoor the solicitors
'• “I (,U! niwf returned it lo him with the
£; Why “ no good '(" Bwuum
, ' WIIH Mm dm! of Oho),,.).
si, 01 he dee, L ol April -Ith, both put nil iheinven-
mns of Kdison wilhin the control of Um-ringMi
■s I ho p Mjieftyorihe finn s II, , I 1 dis „ ,,01,1,1
af hn'otJiowilo lnsgronp of invon lions lo raise
v !. "Si,nv:'t,! "«u- Th.' solicitor llioi'ol'oro
«ul Vico, “no #oo<l.M
This testimony of Kdison's must bo taken lo 1„.
Ml o l‘Vr 'T' lH ,lu‘ ,ilM i'h'<'<> l,o wns one
; !J*“ defend, 'inis ,n lh„ hill. J„ ,]|L. S1 ,
noo ho ,s now the ldrod servanl of the Western
w wS ST' "r . . . . .
T,l,° did'ondnnl need not hsivo this vwV im
=zirttiS£=
. . .sixsiristsf
rootness of iff 11; might have hftpponed that fcln
defendants overlooked its iinportnnee on the trial
and forgot lo attempt to control or explain it; ha
I hey did not, on the conlrnry, limy called Prescott
and til tempted to control it hy I, is testimony t<
the fact that lie went lo their solicitor’s oflico bn
once will, Kdis, on, and then took with him the in
lerlined paper or contract that, Kdison had givei
him, of June 21, 1871, for the purpose of hnvitif
the contract or .Inly lltli written out from it. Tin
facts of the case show that this explanation ennno
ho true, (ml is an ingenious subterfuge, hecans,
the paper that Kdison carried there was
one that he went “over” and got, and brougli
to the Western Union ollieo to show hi,
interest in the Automatic. The paper Mail
Prescott tries to remember he carried there, am'
probably did, was a paper given hy Kdison to him,
which lie kept in his own possession, so fhatKdisoi
could not have carried it to the Western Union of.
lice, having delivered it to Prescott weeks before,
And if he laid carried it, it does not show any in
Iciest in Kdison in the automatic, which lie could
hypothecate to anybody, but was a conveyance ol
tin interest in the qnadrnplex and duplex to Pres¬
cott which Orton swears lie had bought on the lltli
of February, 18711, and a, one-half interest of which
Prescott laid bought as evidenced by that interlined
paper.
Could Kdison, having sold out, all his interest lo
Prescott or the company, possibly have carried
that interlined paper to the Western Union
oilice for the purpose of showing his interest in tile
niitonintie so that he might hypothecate that inter¬
est, for ten thousand dollars, which was neither a
conveyance to him of any interest in the automatic,
nor a description of any interest in the automatic?
as the defendants now claim, bat wasa conveyance
to Prescott of one-lialf l,is interest in the .duplex
and qnadrnplex which Orton swears he had bought
Inly, Mi'. Prescott wont with JTr. Edison l<
ii soHeilor of the Western Union, mid Inn
li'not "f Mini (Into drawn up, carefully pro-
ns Orton swonrs Hint ho had advised Pres-
do, bemuse ho hml understood Hint Edison
voi'y I'olinblo in his oonti'ni'ts. After rind
t wns signed nnd sonlod, on tho nl'tonioon
dn.v llio ropoi'tor or tho Thu ex wns tail loti in
■ss llio workings of Edison's duplex, nnd
plox, thou chiiniod to bo tho joint invontion
oil nnd Pi'osnott, nnd to ninko n ru]iort
, di'nwn up with the knowlodgo nnd eor-
•f Present! ; “ Hint it wnsn ti'filnipli in invon-
iilmost inoi'o importance to tho present ago
no Morse’s first nohiovemonts to tlio peoplo
io contract of Edison with Prescott, tho
u Union supposed (hoy had tho invontion
heir control, for tho nrtielo sets forth Hint
iw system will be speedily put. in practice by
item Union Compilin', by whom tho patent
oiled;” nnd the reporter declares this dis¬
ci bo almost in the words ol' Mr, Orton, “a
of nil difllonltios in the future of tele-
ocossury to observe hero some of the state-
i this very remarkable publication, and to
horn in relation to their surroundings ;
uiu if, wo may, the theory upon which Pres-
Orfon wore then noting, nnd their motive
luctilinr statements of tins publication,
lonosition of Edison in his letter of Shiv
“ Will ("UI.SU 11 loss or $100, 01)0. “[ See Exhibit ‘'ll. ’ ’
pluintIJ/V uei'lemx , />. 410,] At the .sumo time ho
directed his sou, to say whim ho delivered the note
that Udison should “not niako any move in tho
matter,” and that lie “had no right to make any
movo, from wlmt my rather tohl mo to tell him.”
[P/aintiJ/s' enidvnvc, p. 4!i0, J'ol. 1400.]
Wo did not put in this evidence as notice to the
Western Union, as it has been improperly argued,
which the record contradicts, but simply to repel tho
assumption attempted to be established by tile do-
rondanls, that Harrington consented to this sale. Tt
has been argued that there wasaduty on tile part of
Mr. Harrington l ogive tho Western Union notice not
to buy his property. All had been done before Har¬
rington was notilied, as is shown by the contents
of Ids letter; “having learned,” wlmt was going
on, “I have investigated.” No new contract was
made after that, oxcept the alteration of tho con¬
tract of duly lltli to tile one of August 10th,
which change only left out Prescott asuninvuntor.
The law imposes no duty upon the owner of
property to notify people not to purchase it. Ho
may lie estopped from asserting ids title if hostnnds
by and sees it purchased ; this Harrington did not
do, but took tile most energetic measures to pre¬
vent tlio sale, which was all that he was required
to do.
Next, we bud that the models and specifi¬
cations being sunt to Sorrell, the patent solicitor
of Edison and Prescott, Surra) 1 received such
information from Edison as convinced him that the
inventions for which lie was to draw specifications
were the sole work of Edison, and them sends for
Edison and Prescott and informs them that the
unts wimi ugiccd to he issued upon tin* inventions
of Edison, assignor to Edison mid Prescott, Hint
change in Hie agreement of .Inly !)th rendered ner-
esstuy lieciinso Prescott could 'not tnke the nucos-
stiry on Mi without, lie was a joint inventor.
Claiming the inventions ns assignee and not ns
joint inventor, elinngod the whole aspect or (lie ease.
Surroll, Prescott’s solicitor, laid, and swears lie laid
had, (and there is no evidence to emit indict, him) in
his possession, a copy of belli deeds, one on record,
which deed gives solo control to Harrington or
Edison’s inventions, lie knew then that the tic-
t’oi.i lll.ilt tl*«y were joint inventors could not be
maintained to set aside Harrington's rights. Ilo
swears that ho was consulting about the changes of
contract. IDqfeiulaiifi k eehhnce, p. 70-77. j
• i; “,Q\ ,No'v> 1 want to get your mind to this :
„ [' liathor you now do not believe that vou laid
nut some previous eomninniealion with J.fr
Prescott: by winch you knew that lie had knowl-
of such conduct *
'‘A. On the contrary, that is tlie only oreasion
III. t I remember that (lie contract was referred to
“ belore .lanuary, l87o.
,. 'lQ-. t<M,l5 l’.lllru at Unit .same inler-
"to. t|H' beginning of that interview (
,, ! hat interview had special relation to
’.Tti M"' ,s"' ’ 11,1
In that consultation he turned to Prescott, said,
there is a contract between Edison and Hnrring-
tonon record ; has that any bearing on this easel”
\JJfJ nmhutl .s' enit/mwe. ri. 7.1. /•«; com
it. Den. Evidence, p. 74-7fi.
If it were necessary to stand upon the question
of who is to lie believed, we should not lie afraid to
take that issue, Sorrell, one of the defendants being
the solicitor and witness of the defendants, and
swearing ntltrmalivoly that lie did know of the con¬
tract recorded, and did call Prescot t’s attention to
it, and Prescott only answering that ho don’t re¬
member; lint, for all needful purposes the Court
may avoid that issue between the witnesses, because
at that, hour, before the deed of tins tilth of August
was signed, while the transaction was hi fieri, Sor¬
rell did know, and nobody controls the fact that he
did know of Harrington’s deedsof April 4, 1 87 J , and
October,’ 7l), and lie was at that moment the solicitor
of Prescott, and the knowledge of the solicitor of a
purchaser who had copies of the existence of a deed
all'ecting the title has been decided time out of mind
to be knowledge of his principal and those claim¬
ing under him, and the knowledge of the Western
Union, who claim title through him, and whoso
o Ulcer Present! was, having such matters in special
charge. Surroll had both contracts of '70, ’7.1, as
early as 1872. Defendant’ s testimony, 78, fol. 200,
201.'
The dulendaiirs have not presumed, and will not
dare to ask the C'ourt to hold that the knowledge
of the solicitor of their otlicer in a matter in which
they were concerned of the existence of deeds af¬
fecting the title to a property, of which that officer
through whom they claim was about to make a pur¬
chase, was not suliicient to put all concerned upon
inquiry.
'! Is . . . Mint Micse fij^rfimions gave
notice lo Orion or 111,, ri-ln of UarH)feon in Edi-
son s inventions which Craig was claiming >l,i«,u«r|,
Harrington. That correspondence was in wrilh.-
!!iVV7 TT,'" Ml- ’’ouusel f„7.
J,; ;" ' ?1,' t!'"il possession, .uni refused
Mini ] did not h‘ • o.'1',.? " 7, ,n
" o also linil tlint. M r. Craig claimed to be owner
or I lie “Edison's group of inventions,” which
were secured lo Mr. Harrington, by Edison’s deed
and I lirongh sundry mesne conveyances to Craig.
On the ldflt day of October, Craig liled a bill in
ability to restrain. Harrington and' Little and
others from selling any of those inventions in
aiitonmlic telegraphy which Crnigclnimed through
Harrington, lo anybody, and at the sumo time
ho took measures to servo a copy of the bill and
notice upon Orton, the President of the Western
Union, and it is conceded that Orton got tljat notice
and bill sometime in 1874. They are produced here
from the liles of the defendant’s solicitors.
Wo prove the fact that his bill was dated on the
Hith of October ; that a notico was made outdated
the same day, to the Western Union Company.
That. Mr. Hennon, as solicitor, took measures to
have both served at the samo time. We find that
original notice, and that bill in equity in the
hands of the President of the Western Union Com¬
pany sent by him to Ins solicitor, and by his so¬
licitor both bill and notice are produced here on
the trial.
That bill sets out substantially the rights of Har¬
rington, as between Harrington and Edison, and
tlmt Craig claimed them under certain contracts
with Harrington. Orton, as we have seun testified
that he was in negotiation from ,1 ill v until about
the ond of 1874, with Craig, to buy for the West-
urn Union his rights in automatic telegraphy,
which Craig claimed through Harrington, and Har¬
rington held the Edison group of patents, as Orton
laid been informed by plaintiff. Precisely the
lends, in fact of October 1, 1870, and April 4,
Q. lines Mmt|Mie hilter.l refresh your menu
i respect lo Min .sinlomeiils or instructions wli
im nl Mini liino made lo your counsel 1”
A. It refreshes my memory generally as lo
lot Mini I liml ooiisiiltntioii with Mr. Lowrey
nt.snbjocf, mid nindo st a lemon Is to him tin
romi'il i in port an t for him lo consider in urilei
Ivise, ns l ho result of which this letter \
ritlen with my knowledge and approval liefer
his shows that Orion was put on inquiry in
it the eontrnet ruin I ions of Kdisoii with liarri
were. Kdlson avers in Ills letter to Orton, t
elnims of Oenrge Harrington were unde
I'ior oonlraet and irrevooidile power of iiflorn
r wliioli you were aware.” Such is the in
it of Kdisoii. Orton, in answering through
You, on one or more occasions, stated lo i
ml all hough you laid mm‘ relations of con ft
i ilh Mr. //urriut/toii, thru refuted (Mtire.li/
Hu mud dij/'urut mibjntif, and laid no tidal
lmlevcr lo the inventions, concerning which
f’esteru Union Telegraph Company was then
egolialion; mid upon this, as a statement
ict, Mr, Orton relied in making (he expel
ires of money and lahor, which were mndi
our iui|ilesl."
his confession of I he fnct brings the defend
I roly within the rule of law above limited ; I
lie party has notice of deeds or contracts wl
v nll'ect* the I it lo of the property lie is ait
iiirclmse. and chooses lo rely solely upon im
m nisi rontrarl.s, fa' Ii:k1 better have :i
prepared agreement between himself uni!
tluil is, Or! on rlui.se in inly upon ilu; .sink
one lie eliiimml lo lie imrel Millie. of whoso i
'» I Ills regard ho laid liuen iiiiule aware,
I urtlii.M' iii(|iiiry ol' cine who was easily with
lie must, therefore. Hike the ruiiseuiirure
result.
I! close hole the (li-cilssion of this lirilllcl
cu.se. If the' fuels, circuiiisliiiices, dales
",ul “ surroundings*’ Of the Irnnsuelioti
convince the Iciirncd Com- Hint the del1,
both Prescott mid the Western Uni . In,
pendency of their bargain for these tulicm
pnrutiis, were put upon imiuirv In” n
themselves or their ollicers or solicitors' tl,
thing the jilaint ill's cun stiy further would
lie useless and nugatory.
I have treated this subject Ihiisat lettifth
if notice is shown, our position as made 01
he construction or the plninliirs’ . . Is
iresented to the Court by my learned ’is
■enders our title invulneralile u's against tin
irn Union, who purchased with notice.
Them has been but a single other object io
thu ''deiidiints, and that is I
in ling that there was a partnership ngreei
Ictobor 1st, . . it it hud been aluogaled
'P wh I V I I g 1 1
on their manufacture, and estuh-
the shop which ho had formerly
Unger at No. lo Iiailroad Avo-
nivu been made by the learned
lefendants without lmving cure-
['tltorship deed of Octolier, 1870,
i of which provides :
> be furnished by the party of the
1 consist of the stock, machinery,
tions owned wholly or in part by
u inventory shall be made without
tso much of the stock, machinery,
is, partly owned by said party of
id ill part owned by one William
iw located and in use at the form'er
s, at number liftoen (In) iiailroad
t, New Jersey, shall bo allowed to
use by the parties hereto, and the
Jnger, under the tmoxpired part¬
ing ill this date between Hilison,
t parr, and the said William Un-
up, machinery, tools and fixtures,
air lil'teeii (In) Iiailroad Avenue,
1 us a place of general manufacture
lie detriment of the interests of
>’ to lie established and known ns
degraph Works, under the iiuspi-
owned by the parties to this iu-
; understood and .stipulated that
a far lure us heretofore carried on
rred to tlie Amcricnn Telegraph
itahlishcd under this agreement,
r of the title to the stock, niachin-
lixturcs and inventions owned
t by the party of the lirst part to
lie lirst ami second part jointly,
mi in llio proportions, respectively,
muon nb of capital furnished, as
W- Did that business with Mr. Unger eontinm
ilo lio was in business with Hr. Hiirrington ?
‘Q. And Mr. Edison quit Ids experimental slioj
I went in I Ins simp with Mr. Unger?
1 A. Yes.
(.). And continued ins experiments there?
A. Yes.
Q. How long did that arrangement, undisturb,
eontinuu wilh Mr. Unger?
A. It eoutiimed until some lime in 1871), I lie-
Q. What lime, ns near ns you run stale, did Mr.
son leave the nmmil'uoinriiig shop at 100!
A. lie left October 28th, 1871.
Q. At tlmt lime lie was in the shop with Mr.
;er?
A. Yes.
Q. 'Was not the trouble why lie left the shop
hiilroad avenue because Mr. Harrington put
superintendentovorhim in the manufacturing?
A. He superseded him, yes.
Q. Mr. Clark superseded hint as supurinten-
A. Yes.
Q. And thereupon Mr Edison declared lie
Id have nothing more to do with tile nmiiufac-
ng, didn’t he!
A. He did.
Q. And left Mr. Harrington to carry on his
ul'aeturing under his new superintendent as lie
Q. Did you leave when Mr. Edison did, or did
remain ?
\. I went, away the same day.
[J. You left wilh Mr. Edison ?
A. Yes.
Q. And went to Mr. Unger's shop ?
A. Yes.
e firm of Edison &
I think he produced at subsequent limes in inl<
iiiotime.s in pencil, nml sometimes made nppiu
fly while, wailing Ini' admission in my mitt
run ; lint the subject nl' duplex nml ilsuperntio
is n frequent subject nl' discussion between ill
lisnn nml myself at subsequent interviews.
Q. Now. nt 'iiny subsequent interview did li
iMilinn ii price for t,lie duplex !
A . My impression is I but it wns n remark mail
eimni'ctiiin with wind, was u frequent iniilleri
■iiuissinn between Mr. ICdison nml mysell
niely : u ctimpnrisnn of the merits id the ili:
ex nml iiiitniniilie. He was strongly inclined I
it the automatic process very much ahead t
e duplex 1 and from bis point of view h
ought duplex could be ground out with greii
I lion Edison s rn.su II, which rmililuil mio ,>
for fo tori 'i si* the (liruul ion of tliu current, mu
of.liui' operator |o increase or flecrense tin- into
or flic uiirrrnt independently of what lliu first'
ttilor is doing. Mm “rn.su II” ivus not know
tliu public, nor tried on long circuits at I lint; I
and bud defects afterwards remedied. Edison
liliu.s Unit; tliu principal advantages of Ids dnpl
to lliu Western Union was “tlmt limy uimld
vont gutting palunls on Ilium if lliuv wanted ||
A negative valnu.” Tliu duplex with its disad
tagus, in tin* opinii . . Kdison, as Orton test
was not uoniparalilu willi anloniatir. Ini
Kdison lulls him lit* ronld nnikra Imsliol ofdui
es; that is apparatus by wliiuli a, signal ci
l)u Ira iisniil trd nirli way at lliu sumu limu
agruu that was lliu exclusive niuaning of thu’v
“duplex” al Hi, d t inn*. It rnrlhrr appears
Kdison had all his appainlus made that hr des
to lust, anil that all the fauililius hr . . . ,
the wires for lusting Ilium, on long circuits 01
liu phrases it, “ of fouling lliu pulsu of his
hunts. •
' 11 SL 1 * "sli "h ugly leading 01
tlons, Air. Orton is Hindu to sny that Kdi
waiilud olhur apparntiis from tliu Western Ifni
t woulu not undertake to make a uou trad lotion 01
Orton, uvun upon as wide a dilfurunuu in time lis
from li’uhrtmry to Midsummer, but my proposition
is to demonstrate porfuutly not only that Mr. Orton
is mistaken in datu but in fact, when lie says that
Mr. Edison received any apparatus from the West¬
ern Union in any part of the year 1878, for use in
experiments Hindu on their wires.
The first da te on fho.book as Phelps testilies “ nit.
dor date of .lime 23, 1878, is the following entry:
(I experimental relays, Edison.’ I limlthu book
1 says ‘Edison,’ but 1 omitted Edison in putting
‘t down huro, ami 1 now put it in pencil on the
“abstract.”
Therefore it appears that nothing was furnished
Ellison, (for they have charged everything that they
have furnished him,) in tile year prior to the 23d
day of ,1 nne, 1873.
Edison says that from the time lie left for
Europe, lie iiad no use even of (lie wires of the
Western Union, down into the Summer of 1874.
Bill; I don’t depend upon that alone; but
Murray lixes it by his diary tlhrt Edison left on
tliu 2Ud of April, 1873, and did not rulurn until tile
2i)th of .1 nne, 1873. It is hardly possible that Mr.
Edison ordered any relays when lie was not within
two days sail of New York. And Mr. Phelps did
just right in striking tliu word “Edison” oil’ of
that memorandum, if wo were inclined to follow
our opponents lead in calling hard mimes and not
to dual with facts only, wo might tiiiuhuritubly make
some very strong iufureneus as to a false book
foisted on tliu Court, from this date upon the
book, especially when we find the only other
apparatus in tliu yuar 1873, under tliu date of
August 20th, but which is not onturud in the books
until January 1st, 1874. [Set Phelps' lexthnonj/
Q. And IlininiMii I111<1I1<<1< nioiiiomnd . ‘Hoi
rowed August 20Ui, IS':!. N. 0. M Him. is
lining. Aliller, isi.’l ii' ' U 1
Theielme Mr. Edison is not <tmi neeted with tlm
. nt; nil. Mr. Miller was tins Secretary of Iho dole
anil Stock l’uleSj<sipli, doubtless desiring to borrow
somu telegraph apparatus.
V't"?""1 ,lli" ir' "'ils ImrrmmT for Edison ]>t
Ml,lul'< JI|'< Edison WHS no! 11 1 flinl (hue, eilhei
.Imm 78 or August, ’7!!, doing anything on I In
» 1<SI<<1<11 Union linos, wiiy is lids apparatus hor-
rowed by Air. Miller charged to Edison! (1, was
not delivered till .lamniry I, ’7<l. Indeed it
appears that the Western Union . . . (told
an<l Stork Telegrai.h Co. were Sorrowing tele-
enip1"i! and electrical instrnineiils . . each other.
Miller borrowed of tliein twice, April I. |S78 |.sy<<<
ibjeuthivh Kvh/hU it; |, mid August 2l)lh, ’|S7!!,
bit/ovr • I he Ollier April 1st is from Kdison to Mil-
.L‘r- , . I'1"1 hMarmiis order<<d| mid I will
tix Hie rest shows that Kdison was at work for
the Hold and Stork Co., whose Secret; m<v Miller
was and the deiendant’s Kxhibit 17 and '<lii show
Hnit 1 reseott harrowed of Cold and Stork. » 0<<t
t,0'<! "'l'1 2 polarized relays I new I
"inch we used on Pope and Edison's private line
WlieTtTr ',< A",d Pws“» Htt. order.
\ I y did Kdison borrow the relays August 20.
W herelis," If,' 1,!'° Ti ^"'expS *
moating at his own shop i„ n,J (•„„ of ]87^
n.iglit 'veil he that lie should get his friend, Mr.
Z I ™!,v!1’1Tl,,IS twMm- Cmm.in it is
ha Mi. Miller did not borrow the apparatus which
. .'.'"id °" 1»|BU I .</<fen(l<inl’x evMimw] for Mr
Al"‘l ^ lor "le l'tirpose of eontinning ids
-xpoi "neats, heranse, turning to defendant’s ,1-1, i.
bit 11, welind that Mr. Kdison says under date 0
■April 4th, “Mr. Miller: Please inform Mr. Ortoi
that I have accomplished all 1 agreed to with on;
exception* and am now ready to exhibit and clos;
the thing u)i,” Edison being about to depart fo
Europe, which he did on the Sard of the sami
month.
T have called the attention of the Court to tin
entire contradiction by the defendants own bookt
and evidencu of Mr. Orton’s testimony, as to
whether the Western Union ever furnished any
apparatus or instruments to Edison, at any timu in
1S7!I, ei ther before or after Kdison left for Europe, 011
until Juno 2ii, 187*1, when Mr. Phelps testifies from
the hook, that the Ijrst apparatus was delivered to
him in that year, and that Orton is entirely mis¬
taken as to the fact that any telegraphic facilities
on tliu Western Union Line wore furnished Kdison,
or used after April 4, 187!!, until into .lime, 1874, as
Edison testifies. Kdison’s letter of May llltli. 1874,
(defendant’s Kxhibit 14) entirely confirms Edison.
“You probably think it strange that 1 have done
“nothing with duplex. IIow could Edison so
“ write to Prescott, if ho had been experimenting
“all the lime after lie returned from Europe, in
“ 187!!, as Orton tries to make us believe lie had
“ been doing.”
Again : “ I make this proposition— Mint you give
“me facilities and personal help to tost them,”
then you shall have half of all lay duplexes.
Why give halt for facilities which Orton swears
he was enjoying all the time when lie chose, and
had been for more than a year'!
Again: “Iran do nothing without his or your
(Prescott’s) co-operation,” therefore I will give
half for tlm facilities and your personal help to
test the duplexes. How could Kdison write thus
if Orton’s testimony is true ! (Orton’s testimony,
pp. 128-4, fob 41)0-41)8).
Q. lie did not say !
“A. No. _ I t It tl 1 t I 1
“Sour for Mi PiweoM
“Q. Who is he »
“A. Mr. Proxcotl is | Jim oiuctrician of (he (
puny.
“Q. Gonial; IJ. Prescott j
“A. Yum.
“Q. Olio of the defendants in this ouso !
“ A‘ »*n»MJSr itmi I suicl to him Hint—
Ohjoctud to.
SJ lllu P'VSuitcu of Mr. Edison ?
“Q. Statu what occurred, if anything, «
ro orenco to tho directions that you gave by
iiitl i son s roq \ i esfc. J
“A. I repeated to Mr. Prescott l.rielly, ini
u Edison s presence, what Mr. Edison had said
„ "lu 1,1 1'<-<KPu(it t0 lleu‘H»S ""»re facilities and bel
co-opomtion, and requested Mint ho would nr
o'nM^'r °f,.h.is t0 «uu tlmt Mr. Edison li
the lad, ties and assistance t hat ho re,, u ire,
.qAV*" ^'ow whether auytliing was d,
“ tiomr?" 11 of H'ese instri
“ A- 1 kl10"- that Mr. Edison and Mr Prose,
; lort my room in company, and that a few da
thereafter I found them both at work on s
“ buildhrf”*1118 hl tlU! uxl,u,'imont“1 room in t
in the hast of 187#, this order was given to Pro
uolt, it Orton is to lie credited, and Prescott we
<r *
Sow, Mien, that bargain, and all which there was ol
t, was fully rerogui/.rd by Mr. Edison, and full}
lurried out by him, as appears by his letter o
Sjirii -till, part of which i.s quoted.
I have experimented twenty-two nights; trim
‘ twenty three duplex systems ; nine were failures
• four partial successes, mid tun were all right ; oik
‘or two of the latter worked rather bail, but ill,
‘principle is good, and if they were lo lie use,:
‘could be improved in detail. Eight were good,
‘one of which requires no special instruments— ii
‘single wire run in a peculiar milliner in a Morsi
• set of instruinenis transforms them into a duplex.
‘Till models for dilTorunt duplex have been do-
‘ livered lo M min A (Jo., pateni solicitors.'’
It will be observed that in the letter of Eebruary
th, Orton says:
“Also that 1 shall be glad to consider his otliei
‘ proposit ions.”
What those other propositions were appears in
lie letter; Unit lie made propositions as to the
‘working of pluyed-out wires,” which was a sinl¬
ess ; but Orton testifies (hut he did not care any*
liing for that after ho went to sou it work. The
tiler proposition “working long circuits was
ota success,” mid Edison says “these patents will
eallowed in about three months ; ” that is, tile pa¬
ints on “played out wires,” models of which
....... .1, .ltd. i-eil to Sorrell, and on duplex which had
M<> nm mutter dmppnd and novw lm
lit ioiifjcl by I, Ik; pni'tlos to mioh otlinr on tl
. . <»r nny body up to lids dny.
till niorii riMiuii k!il»l«j : AVIion thu Wiisturn
nipnny,in tli.;ir l,;tt<;r of Folmimy Oth, 187
limit: tt KvJt.ibil ‘Vi,\\w ii-spouse to Edison's
inury Sill’d, (•nitdiilly pivpni'od by tlmiruon
iob tlioy s(;t no tin; title; of Mn> W.wh.m. it.
an iigreeinen l to submit tlm price of his i nven ! ions
to arbitration, and so compel a fall valuation, any
nioro Mian to Orton, but Hint is not; wonderful, as
Edison swears lie never made any Hindi agreement,
although Orton swears liodid.
Still I'nrl lie)* in llm receipt which we have just
recited— the preliminary recuipt of December 10th
—the purchase of these inventions is made condi¬
tional, “provided the terms of payment for such
“assignment and transfer shall be satisfactorily
“adjusted between the said parties and the saitl
Telegraph Company."
Is not this a waiver of the arbitration elatiso of
the parol cont ract, provided such a clause ever did
exist except, in tile imagination of Orton, and is not
the omission the strongest uvideucu that it never
existed anywhere '!
Still further, when in 1875, in .liinunry, the West¬
ern Union 'Telegraph Company brought its bill in
Equity, sworn to by its Vice-President, under
the lead of the same solicitors who appear for tile
defendants, now they set up this parol contract in
January, 187-1, by the words “on or previous to
“tile month of .lanuary, 1874," and therein ex¬
pressly state that tile agreement was that Edison
should endeavor to invent improvements in Stearns’
duplex system of telegraphy.
Now, Orton testifies that the agreement was
made almost a year earlier, and that Edison had
had, from February (ith, 18713, except by occasional
absence, the usu of the shops, operating room,
operators and lines of the telegraph of the Western
Union at his pleasure, under his continuing order
to his subordinates to furnish him all facilities and
such apparatus as lie desired, from February,
18711, till June. 1874.
How is it possible that these conllicting state¬
ments can be reconciled i Is there not some mo¬
tive to endeavor to tack on this parol agreement
'of 18711, to the agreement of Prescott, so as to cover
“Case 11,” which had been applied for in March,
"l,,m ll"l,lox> "« H'»t loiw W..H thou understood *
Jl so, why should it 1,„ stretched over n double
transmitter, first invented in I ho Full „f is?:), in
Atnvmic, Now .Jersey, mid tbeiv slnmn to tliu
o «s of tlio Western Union i And only mndo
eminently operative to proven!, Mm mixing of Mm
*"tfnnl» on Mm Till of duly, ISM, ns we hlm. seen
SW,/— ' Tlmt wind over wns llm snhjool or Mint
contract, wns elosed.mid ended, April dill, 187:1 so
, r »« “■•Iwon was eeneerned and refused to he
c ;^d and set Mod hy Orton, and never from that
d.i. fo tins mentioned to Edison or Ids attorney,
ivii 1 !t»i\ upon Mu* evidence. ^
, . . . under Mm
oft|'l!(‘l (■'•'ist 'l ''''' J''*11’ 1 1. 1 1 ^ 't* l0'l^|i i isViiVi /'n t ' Lt i! t'e!iM|f-il|<t;
.
sssr*'",‘ . . . .
Tills is an independent title sol; np l,v the defen-
Imits, and must he made oat by Mioni by a fair
"b MnJ'overy0^'^! ,1UU’ «">"
mo kos i, ne lnvonrion property cannot be assigned oi
convoyod hy parol, yet the invention which becomes
property only because it may lie patented, may
lie assigned by words i Wo hardly think it is pos,
sible that tlm mine party will claim that to be the
law, who claims that the invention, as such, can¬
not lie assigned at all, either by writing or by
d ied. But it i were middled to present the
ipiestion, it lias been so milch better presented
already than L can do. that f will spare trespassing
upon your l Conor's kindness and attention with
any argument upon this topic.
Tim other chain of title through which tlm West¬
ern Union claims, may lie called, for convenience of
designation,
Tut; Pnusoorr Tm.n,
The roll strength of this title is ns follows :
On tlm dtitli of May, 1874, Mr. Edison being at
Ids shop in Newark, and having Micro certain appa¬
ratus by which double transmission of signals over
one wire both ways, was made possible, which lie
had invented and perfected so far as he could do
on a short circuit between New York and Philadel¬
phia, lint which mast be tried over longer circuits
to bo fully perfected, which ho had shown to tlm
directors of the Western Union, and their superin-
.tendont, Mr. Eckert, in tlm fall of I87ii, and being
unrestrained by any contract with Harrington to
make a full sale of his invention if so desired, wrote
)Z H.m Z MM%U; „
>; M p. 20 Jot.. (10), who look no action I her,
0|,*,,n s "!l uni from Chicago, w|„.lv . ,
Thin, thereupon Kdison sol, I |,|„ im,
ll0l|s "• »«'•■ (.lo.ihl o„ ,|,o 4fl. of I-
'""■.v, ijm on Hie 10,1, of .hinnmy, M|, j,;
,.l"i " Union and , .|oau ,il(J |mL,
^oiiMli, of Edison i„ writing, and
■ . 1 . i „ received I'i'oni ,],,, Vest,,
Il"‘n 0,1Vle<l . . . lh„ off, if of ,1,‘e Wes,,.
I',,, 1 ";llolu ''''•‘’■■lion, provided Kdis,
II, 11011,1 ,1,10 i. rescan; rook mi, lor the
greeanml <>l August Iflt.li, the cut ire consideration
mill for it was furnished by (lie Wosloru Union in
liuir facilities unit Ihuir instruments, mill what
'on«y «’'i» I>ni‘l was t heir muiiey, while l,o was
licir electrician, in their employment, nud entitled
Imroforo to the wliolo of his personal services.
Now, by a familiar rule of law, title act] niroil in
10 iiiaiinur described, to any property, is simply
eld in trust Tor tlie principal who furnishes the
nmoy which it cost, and the time expended to
iitain it. I t may he said Unit Prescott having got
rton’s assent to Kdis, ill's proposition to furnish
im the Western Union wires, their operators, and
iparatus from I heir shops, and take a half interest
i consideration thereof of Kdis, in to himself, would
irnish an exception to this rule,
ft would lie a very dangerous rule to establish
at. one servant of a company without special an-
orizafioii. having general only charge of its works
mid authorize another servant of the corporation
expend its money, its property, the time of its
rvnnls and Ids own time in acquiring property
r his solo use and beneilt, and authority for
iu servant ot a corporation, however high in posi-
m, to permit his fullow servant so to do, cannot
presumed.
No special authorization of this action of Orion
shown, nor is there any evidence that if was eve
die known in the Hoard of Directors or executive
nimittui! of tliu company, or sanctioned by then),
I. quite to the contrary.
h'irsL — When Mr. Orton came to make any coil-
fc£S™;:"ai,,7ioi,o'w wb
muUoovne lit .^'V ? "'S"01 lhe P't'Poif.y, ami
; 0f, n,,i ,l,omV “f the Western
Um on, .1 ml devote tho fnmi of its employees to
making .such inventions, wlii. li should ho the prop-
k i8 10 „,ymi„d
. ‘ ,llnl "’ha lever title I how is in Mijs invon-
inm in Vrumtt, U any, passed at to the Wool-
mn union as Ins r,;x/„i ,j„e lni.it. That brings ns
to an examination of this paper of August l!)tli,
uliml1 is important enough to bo transrorrod to this
“ Artiol.M of agreement innilo ami entered in¬
to tins nineteenth day of August, A. J). 1871, by
ami between Thomas A. Edison, of Newark, in the
Stale of Now Jersey, and George B. Prescott, of the
city and Stale of New York, witnessed! :
“ Wli iru:n said Edison lias invented certain
improvements in duplex telegraphs, for which lie
1ms executed, or is about to execute, applications for
letters patent of the United States, and such uppli-
cations are numbered 04, Off, 00, 07, 08, 00, and 100,
and are dated August 10, 1874, and said Prescott is
entitled to an ci|iml interest in the same and others
hereafter mentioned.
“Therefore, in consideration of the premises
and t he sum of one dollar in hand paid, the receipt
whereof is hereby acknowledged, the said Edison
has sold and assigned, and does hereby set over
mid convey unto the said George B. Prescott, one
undivided half part nr tho right, title, and interest
of every character, in, to, under, and connected
with each and all the aforo-mentioned inventions
and letters patent on the same when granted, and
liiiil diligent; search made to see it any
eoutont ns tills can lie round anywhere as
law, and liavti biion so fur nimble to liiul
! should have no hesitation lo grunt a
ir this paimr for its iioiuilly.
[.fulness is more questionable. Indeed L
well described by my learned associate
■olio, in the language ot tile decalogue as
the likeness ot anything in the heavens
Kill in my belief Hint this p:ip<M- is wholly in’,
punitive mid void ns a coiivi'yann' is, llml it is
slilioil to thill it whs drawn in iho Law :im|
wearing Department. | See defendant's Exhibit
!, p 1-1-1 |. of tin* Western Union Telegraph Com-
iny. | Sue. Or tun's festiiunni/ />. 2fii \,f<d. ioj:i | :
“A. Wo hoop i( Swearing Uepu'rlmeiil, anil I
mn iiimhhi In remember ail that limy . . . to.”
Tim distillling provisions anil conditions am
toplutl from llm nniitract of .Inlv nth, 1874,
■Iwoon tho sit mu purlins wliirli the evidence is
is drawn at llmir ollinn.
By Mr. .Serrell.
If lui had lostiliiKl that In; had drawn it hitnsoir
invar would lum; Inkon tho objection to vour
'nor, that lm was prohihitod rrom t osl i Tvinir to
yll'i'itf because ha was a Inwyar.
In Ilia absence of authority to aonlrol our lialiaf,
lolaim that naither legal nor capiilalila til la to
.v thing is conveyed hy this pa par.
rxoo.vsoio.vAiit.u tuta. it.v.
t being alainiad that them is a right in dr, how-
:r, wo olijaet Him it is wholly without aonsidara-
n, and an unconsaionalilo hargain.
VI: law tlm seal imports a valuable eonsideratioii,
t equity will I ailc into the eonsiduration of Ilia
'gam between the parties, and reform it to do
itien between the parties.
Vo invoke therefore, with eonfideuee the itilor-
lUon of a court in eipiity in this case.
\ hat are the facts t Edison had an . . of
s most important invention as long ago as I Slid :
1 been engaged in experimenting to find a mode
make it practicable from that day until 1873
lending large sums or ,.r i.i.. a . ,
for that purpose, and showed it in operation there
to ollicers of the Western Union Telegraph Com¬
pany in the fall of J878. Wanting to get the use of
the wires on long circuits of two or four hundred
miles, he had applied lo the Western Union for
that leave. Mo had received an order from Mr.
Orton to Mi'. Prescott in the latter part of 1878, or
the early part of 187-1, directing Prescott to give
Edison all tho facilities lie desired to test his in¬
vention. ( Sue defendant's evidence, pp. 123, 124, a
portion of which is before quoted).
Orton was taken sick in February and went to
Europe in March. Prescott neglected and refused
to carry out Orton’s order which it was his duty as a
■subordinate to do, and also as an employed looking
to the best interests of his company, so that Edison
wrote him j Defendants' Exhibit 14], in which he
complains to Prescott that Orton has gone away,
ami that he can do nolhinrj “ without his co opera¬
tion," and makes him the following proposition :
“ Give mu personal help to test them, then take
“ the patents out in our joint names, and then pro-
“ soul them to the company for purchase on their
“■merits alone ; protits, if any, to lie divided
Edison testifies that he did this in order to get
some olllcer of the Western Union interested with
him— a consideration which no Court of equity will
uphold, it being against public policy.
On the first day of June, Prescott sends
for Edison, and on the 10th of June, makes
the first order for an instrument to aid in
making the test, which instruments iSee defend¬
ants' Exhibit 17], he did not gut until July 7th,
the whole of which sets of instruments cost 8110,®^.
It is a curious fact, as illustrating the book-keeping
of the Western Union, that two of the “ polarised
may he llm rights of tlm Western Union Company,
Prescott Inis no title, oitlior in law or equity, in
any form. Wlmt lie Inis, it any, lie holds in trust
for llm Western Union, from whom all possible
consideration lias passed.
We cannot, believe there is any equitable title in
Prescott in these inventions. If, tlierefore, these
inventions did not belong to Harrington, the legal
title was clearly in Edison. We have disposed of
the equitable title so far 11s it can he by argument,
which is sul up by tlm Western Union from the
parol agreement between Orton and Edison. That,
as we have seen, must be laid out of the case be¬
cause, under tlm authority of tlm Empire Wind¬
mill Company vs. tlm Continental Windmill Com-
•pan//,.] udge Woodrulf queries that tin equitable title
arising because an employee lias made an invention
in tlm interest of the employee, under a promise to
convey it only came to his benefit, where the
party who claims the equitable title accepted the
invention when tendered. Here Edison having ac¬
complished all he agreed to do, tendered I he title of
his duplexes in his letter of the fourth of April,
187.1, to Orton, and Orton lias neglected from that
day to this to accept that title and pay Edison
therefor.
The imly title Orton negotiated for in December,
1870. was a title to the joint inventions of Edison
and Prescott, as evidenced by the preliminary re¬
ceipt of December Kith. Now, 1 agree that a re¬
ceipt may he explained to show to what it applies ;
but sntiii receipt gives notice to third persons only,
of what there is on the I'acoof it, so that Mr. Gould,
when ho saw it, only had notice that it applied to
certain joint inventions, hut to nothing else. Orton
refused to close even this bargain, but went away
after repulsing Edison, without notifying him nslie
swears. That left it open for Edison to refuse to
hold the matter further, and to sell to a third
i .111^ ( uin-r dim me title claimed throne
proliminnry rcroipt for join! inventions I’diso
grossly swejirinif t lint liu never heard l!,„t
was ever clam mil from him to t;Ti,. qnn.irnplex
,mr"' <>f Kol.r,
I heroforo, nil Ellison’s right, title, am
farost in these inventions passed into HouW,
am .,n"r ‘V N f 11,1 ' 1 I ll i n
l\L I1'.1 hnnlly been merged in one title to
V l,",,hir’ "'lli,!l1 is «»u put forward lioro.
Therefore, the plaintiffs stale their title thus
n/nf ‘V'}’'?1”1"1 through Harrington, by vf
of ins deeds from Edison of the inventions,
mbed therein, which title Edison confirms!
Second.— Ot nmt title m, show Ilo(i(!U
" es,ei'Jl L"""‘ rtmnigli their agents or by reeo
inSf'-vi11'0 Co,,rt ,inrt """■ 'ho title to tl,
ain , i n r V"01 ^ hy ,lu'si; 'hen it
unco, nplcted negotiation, and of no 'bind'
thJ'only’tldf8 t,,U1'0r0,'° h0,dnn better, a
Hespeetfnlly submitted,
HENJ, F. BUTLEE,
Of Counsel.
$ty4tw <£<ntrf.
ATLANTIC AND PACIFIC TELEGRAPH
COMPANY,
GEORGE. B, PRESCOTT,. ET AL,
There is no legal title to inventions before
: patent issued.
The purchaser of a patent stands in the
shoes of his assignor, except as to re-
• cordable assignments. '
By WYLLYS HODGES, of Counsel.
MrDANIHI,, MI.M.MIS SOl'THEIt,
I'huutijr* Attorney*,
1'OKTKIt; J.OWHKY, SOItJCN & STUN IS,
' Dufvmlii hi' * Atiovitry*.
This lino of argument was adverted to liv counsel
on thu slimming up, lull- was not elaborated.
I lie natural older of lliu argument leads us to
rousider, first, plaintiffs title ; second, defendants’
die; third, the relations of the two; and fourth,
the relief. ’
And lirst,
OF P LAI NT [ h’h" S TITUS.
, T1i,lsr i,«ul>,,;-^s|i,,K Orst, on the parthership
deed of 18/0, and the assignment of is?l ; and see-
ond, on the assignments of I87ii. The lirst is tliat
to which this argument principally directs itself.
It consists, ns stated, of the partnership n-rec
men (supported by the assignment of 1871, and it
is insisted that the agreement is, of ilseir. sufliricnt
ill Mew or the rads to give Harrington an equitable
. . . .
Aflitisn.Mn.vr op Orroi
This a
at, 1870.
. ,,r Pi'imarily created a partnership.
providing for a capital slock, a place or business, or
two of them, and dolining the nature of the Imsi-
ness .1 wo-thirds of thu capital came from Har¬
rington, the other third consisted of the tools ap¬
paratus and machinery with which the experiments
were made, which.oul.ni.iiited in these inventions.
One ol the places of business was thu shop in which
Kdison continued to experiment down ton late dale.
I lie business was to be the impn.vo.nojg of tele-
fe .iphy and the manufacLure of teleginphic instru-
tlie lirm1" '* 1 10 1'wl»rovomont8 were to belong to
firm11 !!‘i' liun °f tllu invunt01‘ was to belong to the
hini, and all the product of Ids brain (Sec. o, folio
tin r n S^L ll} * t" S1 1 s l I ,g 1 t
the Gold and Stock Company.
This is not contrary to public policy between
‘partners, ft is the common partnership provision.
Neither is there anything contrary to public policy
in the provision that nothing should be invented to
militate against automatic. I may not bind a man¬
ufacturer, a stranger, not to manufacture, but I
may turn his energies in a particular direction,
much more my partner’s. In a partnership to man¬
ufacture and sell When goods, the partners may well
be restrained from making cotton to interfere with
the linen market. It is also said that plaint-ill can¬
not under a contract not to invent certain things,
claim that those things passed. Such an argument
is based on several erroneous assumptions. In re¬
ply it is contended.
1st. That these inventions do not in any respect
militate against automatic telegraphy.
2nd. That in some points of view they are of great
assistance to it.
iird. That if tlioy may be considered ns repre¬
senting a rival system which, in the hands of its
enemies, might seriously militate against automatic,
yet in the hands of its friends they are useful and
of great assistance; and
4th. It this is not so, plaintilt’s equity is still
strong. One of the principal objects of the partner¬
ship was to promote automatic interest, and they
secure Edison's whole lime ill order to promote
them, taking a proper agreement to that effect. If
he has broken the agreement, it renders tile equity
to have the product of his time still stronger. And
the rail1 assumption is that the covenant meant he
should not invent for others.
The entire scope of the agreement is to cover all
kinds of inventions in telegraphy. The argument
against this is that it does not cover a system like
case 09. This is one of thu instances of the versatil¬
ity of counsel. When trying to show that it is not
applicable to automatic, 09 is only an invention in
the details, in the particular Apparatus employed.
In Prescott’s conveyance it is apparatus. But the
m Millions i
sole properly of Jidisnn, because ,|U!v wi
production the partnership, Him
Ihirringlon owned the inventions when they wet-,
Kvr'rjtj in7"."'w t h,. i, h„v,,
-r: • » j-mir, inventors under the patent, laws.
. -
to I e ; «hnr J intents shall issue
Ihetmentororhts assignees, and upon his ap-
Vi' ""- .lof",,il1 "'w l»'ovision, we are obliged
e n Il7r^y "* ,""'hois '>'"'l">»icotl„
; "<1 10 follows that it helot, «s him
o whom the patent issues. The patent to Fils-.-
C r w'^V" ,l"‘ ■> issued,
'mjlor rs. Wilder, loth How.
ii«ln^f,V;,i0n ‘""1 In'infftaff
h t L‘sl,L'uillllJ’ m.«1, fin nt „s ,s
muse, tune, eaptlal. and l,ns!.,„ut. . . ,
little ot elotli prodneed liy a umnufnel tiling
s which does not belong to the partner win:
\| charge of I he factory any more titan to the
f who sells, or a, hook gotten out by n pulilii
ft. linn, whieli does not necessarily belong h
|| twlltor, lint to the linn, if that lie the con I mi
| tween them.
I There I'tin lie no doubt of the point of law in
| etl. It was decided in Kmpiru Wind mill C
| Continental Windmill Co., *!th Fisher, -128 (I
81 h Blatchford), and was admitted by the let
counsel who concluded defendants' argument,
who claimed, a. properly in (he defendant* on
rix ely (he same y round.
f The question is one of fact its to whethei
' inventions were produced by the Western 1
i Telegraph Company or Harrington as the road
‘ of Kdison, and the testimony mast decide. I’l
ill' feels confident on this point, supported h;
oral testimony and the written agreement.
As to the amount of the consideration expo
by llarrimrlon. it has been claimed that a
I Will lii testing H ml pmeniing i lie [, 5
own in December. 187-1, long :■ rii*r pi
iHpieled. It wns mil In help ‘to |iii,. \ t;i
si 1>1 nil ise, III sec wlii'llii'i- limy were 3
II till lltlf, lUttl Ut SOrtll'l! I III! Il|l)lill|lll|y
another, mid it lollows from \\ indmill Co. r
Windmill Co. Bill to mei'l (lie provisions of Hi
jmv Hie assignment of 1871 WHS taken, nml sulis
qiienlly wlmn tills wns contested nml doubled, II
conveyance of 387/5. Tf anything could slrengllii
tlm lillo in equity under Hie partnership ngrc
is point of view, is it of iinpnrlnni'u
eiilions were imnle, so long ns limy
lining I lie lerin of the purluershi]i.
iled In lien. Ki-kcrl in 1ST:!. In April,
Id wns writ ten. All tlm limn months
"i'k, nil llm fruitless experiments, nil
I in making eonipnnilively vnlnele.ss
lislilillilig steps in Hie great iliscov-
i he charged in tlm account of Quad-
ing this lime Edison wns supported,
mil the expense of his work defrayed
This is llm lime ii look In proilme
mis, nml this time belonged In Hie
Id not Inke even llm hnlf-eonipleleil
properly of the linn with whom lie
ilrnet to reninin long enough to finish
o olhers so ns to deprlVe his pnriner
lie properly.
led, however, Hint the in veil Him wns
’ Hie linn, nt lensi sitilieienf ly for
1 for chemical purposes,
limn, Hint under the ngreenmnt of
volitions were the joint properly of
"V//, mid ns mncl) the property of Hie
ml inr provisions of the low minting
patents will allow,
ipemtes like n Custom-house law,
Is to he entered in the inline of those
ged in their ninnnfnclnre. Such n
ninnt, mid if it was not done try the first nssigi
Knout, it would lie this. II do es not mallei ■ Unit
wns subsequent to delemhmls chums, because it
supported- bp the prior ei/iii/ip
We have united this the prior cqnltnh
interest nml whatever of virtue there may he in line:
press assignment, the one feeds tlieolhor. fifo oth
foree will lie nttriliuted to llm assignment in Hi
lirief. The second step in tlm argument is tl
eonsideintion of
DEFENDANTS' TITLE.
It is not proposed lo consider this title in fill
oilier counsel have nlilv done this and its ueaknc!
has been pointed out. Its lack of considerntioi
its lack of nil equity, of form or force in law, nil
its desl met ion by notice has been siifliciently dii
cussed. Without abnndoningnny of these point!
buf/w the purpose of lh is brie/' i I will be concede
here, that defendants’ title is supported by a goo
eonsideintion by a completed eonlracl, by Inwfti
conveyances and Hint it was not nlfected by Pres
colt’s breach of contract, by actual notice nr untie
by the record, of Hie prior equities, Hint it was i
fuel and in law as good a title ns it was possible fo
them to gel before pu/eiii issued, in everythin]
except Hint il was loo late because llm property Inn
passed from the ginntors hands liefore llm till
enured. f[’|m argument of Ibis brief is solely t ha
plnintiir.s title is best because it is earliest and tin
consideration of defendants lille may therefore l»
had under the thrd general head of
statement of tliis principle
contended Unit tin; trim
is tliis.
That mi invention may lie assigned before patent .
so ns so give n legal title, but hnismurh as the title
■is to the patent not to the. intention, it lines nut
lithe ej/eet till the ■/intent issues ami the 1110110/10/1/
conies into existence , until then the title is pureli/
ei/uilnhle.
in considering the nutliorities it will be notireii
t liar. Ilie courts do occasionally speak of inventions
as properly, nnd ns being assignable. The language
is however generally qimlilied nnd in nil enses it is
of nil uqnilnble property not 11 legal one tlmt they
speak, if nny iiniiorlnnce is to lie given to such lan¬
guage. No other principle however is to lie drawn
from the decisions than t hat above stilted.
It will lie convenient to examine tint .stnlnlo lirst.
The only sections which affect llm question are
Sec. *l80n nnd -I8!18, U. S. It. S. Section -18i)8. (The
only one that directly provides for the assignment
of the monopoly), snys that patents or any inlenv.l
therein limy be assigned by an instriimunl in writ¬
ing (not orally, Davis vs. Morgan, fit! Ihirb., 218).
This does not provide for the assignment of inten¬
tions and if this were all it might, be a question
whether any assignment before patent would lie
worth anything, lmt it is probable that if there
were nothing else the courts of equity would
seize hold of the provision, and arrive at the same
doctrine which they have now promulgated through
s|n-i:illi-iiliiili. mill I tie tllMiluillon Ims iilwoys lim
Tile entire section suggests that
tended to make that assignable, wli
before, but (limply to regulate the f
of tlie grant. Moth the sections are
the inference is, that Congress did
regulate the lime, manner, form, in
signmeiits of patents, bat simply
assignable, and leave the courts I
property according to the general
law.
The statute then provides for tin
/uitenls, and also that a patent may
the assignee, of the inventor, and til
does not necessarily atVeel I lie qtn
because the courts have held, that
not issue to the assignee, still al'lc
the legal title, (taylor iii/st. Wilde
intended to affect the title, but in
power to the Commissioner, and t
form and manner of the grant.
As staled above, (lie "courts have
liter than the statute, and it is I her
to examine the decisions. Almost
in imlent cases a Heeling the title
probably every one that, affects tli
been cited during the nignim at, or
counsel. It is not intended to exal
leaded In decide nothing nf the kind. They sn.v it
in “"not. necessary to decide whether, in any case, a
sain nf an invention wliirli is not patented, carries
with it anything of value." It was contested,
whet her nlieense to nsua />n/eii(rt/ intention passed
under an nnsignment of an nnpatended improve*
nient, (lie patented invention living a necessary ele¬
ment of the nnpntented one, and file Court decided
it did as a right growing out of the oilier, and that
was all. They made, and could make, no decision
as to the property in the unpntented invention.
Tito case is an excel Ian t illustration of the principle,
that there can in no conceivable way arise a contest
over the tesal title, to an unpntented invention.
After this review of the statutes ami authorities,
it may be justly. claimed, that there is no legal
warrant or precedent for defendants' position, flint
they *)#} owners Of a legal title, to .something not
in existence, /. r. the patents for Kdison's inventions.
The contrary doctrine would seem to follow from
tile well settled rule of tile common law, that it
legal title must he to existing property. To meet
this dillicitlty, it is snid that the title is to inniit-
Ihntt, ( vontra (Saylor r.v. Wilder), and that the
patent is lint the deed to property already ia ex¬
istence. (The patent rreu/ex the Gavlor nx.
Wilder). Assumimr the analogy to he correct, it
venlions whit'll grunted lml I In* im
Ilium, ami "llial is rrea It'd fev thegrai
All thy world may use ilia Inventlri
(eX'cqpt Edison & l’rescott, who liy I hair n
agreement have stipulated not to), am
world may usa I ham al Ilia expiration ol
Filially it may ha said, that, it saams im|>ossihla
to conceive of any way, in whiali this litla ran ha
brought within tha jurisdiction of a strictly com¬
mon law court until Mia ]iatanl issues. Mandamus
will not lie against the commission, because ol Ids
Judicial functions. Thu only remedy against him
would be Ilia bill in ei|iiity provided by Congress,
if Hint would lio. lietwean tha parlies, no common
law remedy exists.
Hut if thu estate is not within the cognizance of
the law courts, it is not n legal estate wit ilia the
dalinition of HouyVer, or any other which counsel
can 11 ltd.
Before passing to the question of tha equitable
rights of tha parties, it is propur to say a few words
upon tha ipieslions of record notice.
before invention and after. .Bill there is absolute]
no warrant Tor u distinct ion bat wean the records i
such assignments. Beeord notice is purely a ere;
lure of statute, and vary zealously watched by tl
courts ns In derogation of common rights. Such
distinction cannot lit! established without statute]
foundation.
it is believed to have been established’ that d
feiidnnts have no legal title. We come, tlierefol
to Mia consideration of their equitable rights.
It was well said by tha defendants’ counsel, i
tha argument that a patent is a mere chose in i
t ion. That it must lie so, appears from tha cc
sidarations as to its nature already stated, in
it lias always been so classed. Williams on pi
annul properly, page 0,(pngo <W, 3rd Am. Ed.)
The slat u las have made it assignable, but i;
necessarily without, regard to equities, just as a
statu statutes have made other chases in acti
assignable, but it is wall settled that such ussif
mantis subject to equity. Bensons have bean alrea
given for supposing the patent statute not leap]
until the patent issues, (the Invention; then being;
Him, able at law, but before that only m equity),
. ... . Ol . . vi.irio’d it ill the liirlil of t
kdison, like Kennedy, 1ms no legal title because
i patent has issued ; Prescott, like Kitehin, lias i
■Meet equitable title (for the purpose of this
gumont) though weaker than Kirch ill’s, by
nson of the deod of April, 1871, and nothin}!
mains to bo done by Prescott, as by Kitehin,
cept to procure the patent, to lmvea legal title,
it Harrington’s earlier titlo, oven it resting oil
oratory contract must prevail as Collin’s did,
cause earlier. Among equitable estates the lirsl
the best.
Chew m. Harnett, 11 Serg. and R. iit)2.
Rcenj equitable title is an Incomplete title, (alsc
lied an inchoate title) and ever purchaser of it
kos it at his risk.
Cl'. Gaylor m. Wilder, “The inventor has an in-
mile title to be perfected by proceedings,” in the
J'lie purchaser of an equitable title purchases at
i peril, and acquires the properly burdened with
cry prior equity.
Shinns ex. Calg, 7 Crunch -18.
Valter re. Mind, 7 Peters, 2f>2.
Boom re. Chiles, 10 Peters, 177.
Williams on Pel's. Prop., page 222,
(HU, till Am. Kd.)
iMcClurg re. Kiiigsland, 1st How, 202.
Brooks re. Hymn, 2d Story, fi20-r>2il.
'rile last three authorities are again cited below
especially applieablo to patent rights.)
w ill'll (mi xlni iiin i/orx mil m I urn uni/
ix In xitb.iri/iirii/ /iiu-c/ifixrrx i\rrr/il xnc/i I
i/irir/rtl lo Im mw'fW.
■! l>hli„t;r v ro.sy; /*• f//<? s//‘nli;/i‘f. bn-llln
mix xhtml in Kilixmi' x x/mrx.
du from tlio question whether the in
iHiin tin; terms of llienssignnionls of I
ollioi' (] uusl ions which have Ikm-ii nvoi
se .snllicicnlly (1 isciissml l>y ill her co
ns only lo lit* considered whether ph
ml lo tlio inttM'fiwu'o of the Court, i In
ii title or this hd,.r.
1 such power is poenlini'ly the provii
nl it the person holding the power I
•reiso it wrongfully, the jurisdiction
l would lie perfect.
i Commissioner is beyond the reneh <
id the remedy limy therefore hi* g
lie conscience of those in whose fnvi
net is nliont to he exercised, if they
ive steps to promote the wrong,
it is it hill fornspeeiiicperfornnincenj
ns of tlio eontrnctor. It is snid I
Inis the legnl title, tile relief will i
Tlio reason of t lie rule is that if ph
legal title, lie does not need the reli
onrls will help him. Could anylhi
mi that plnintilV does need relief, am
remedy in tile law Courts.
' the patent should he issued to Ii
lor Cnylor M. Wilder, plaintiff migli
iwn it in its own right. lint Unit i
idless litigation, llmreforo it is n liil
mnissioner tlirentens to issue to Pr
in. It their title would not lie impi
Id tlien hold ns trnslees for phiinlifl
. Y. SUPERIOR COURT.
City and County of New York.
THE ATLANTIC AND P ADIPIC TELEGRAPH COMPANY
. GEORGE B. PEESOOTT, THE WESTERN UNION TELEGRAPH
COMPANY, ETC.
ARGUMENT OF LEONARD MYERS, OF COUNSEL FOR
PLAINTIFFS.
!
N. Y. SUPERIOR COURT.
City and County of Now York.
against
: 1!. J’iikscott, Tin: "Western Union
TeI,EUU.U'H COMl'ANY, ETC.
STATEMENT OF THE FACTS.
This hill is filed to enjoin the defendants from receiving cer¬
tain patents for inventions of Thomas A. Edison in Qundniplex
ami Duplex Telegraphy, application-, for which, ten in nnmhcr,
are pending in the i’atent Office, and from selling or encumber¬
ing their alleged interest in said inventions, and for a decree
that defendants shall assign to complainants all their interest in
said applications, inventions and improvements.
The principal invention in controversy is described in the Hint
claim of application, No. 09, and is known as the“ (jiiadrnplex,"
by which two distinct currents and messages are transmitted in
the same direction (as well as ophite directions) over one wire
at the same time; and the question to lie decided is that of the
title to and ownership of the inventions.
On October 1, 1870, George Harrington, the assignor of Lhu
plaintills, desiring to avail' himself of such means as would
develop the art of Telegraphy and chou|»cii its benefits, entered
into articles of partnership with Thomas A. Edison, a man of
groat inventive ability in this direction.
Edison had already begun to improve not only the automatic
system, but what is called “ Duplex” telegraphy, by which me*.'
sages are sent in opposite directum* over a wire at the name
tune, and as early as 1SU8 he published the description of his
N. Y. SUPERIOR COURT.
City anil County of Now York.
against
CiiiouciK ]!. Biiusoott, Tim ■Wksthbn Union
TKUiUU.U'H Oo.Ml'ANY, KTO.
STATEMENT OE THE FACTS.
Tills bill is filed to enjoin tho defendants from receiving cor-
tain patents for inventions of Thomas A. Edison in Qundrup ex
and Bill, lex Telegraphy, applications for which, ten in number,
uru pending in tliod'atent Ollieo, and from selling or encumber-
ing tlioir alleged interest in said inventions, and lor a deeroo
that defendants aliall assign to complainants all their interest m
said applications, inventions and improvements. ....
The principal invention in controversy is described in tlio lirst
claim of application, No. 00, and is known as the “ Quad.;, iplex,
by which two distinct currants and messages are transmitted n
tiio same direction (as woll ns opposito directions) over ono \ui
at the same time; and tho question to bo decided is that ot tho
title to and ownership of the inventions. . ,. ,
On October 1,1870, George Harrington, the nssigno o he
plaintiffs, desiring to avail himself ol such men >
develop the art of Telegraphy and el, capon its benefit , e ed
into articles of partnership with Thomas A. Itdison, a man ot
great inventive ability in thle ilireotioii. ^ mltoina,,ic
Edison had already begun to itnpio\o not j mca.
system, but wlmt ia called “ .Duplex’ lolcgrap 0 , 3 ^ ^ gjun0
sages arc sent in opposite directions over a nt* bis
time, and as early ns 1808 bo published the dcaci 1
l
in to every system of Telegraphy.
Jt is not disputed that Jidison’s Duplex was perfected
tadmplex invented and perfected within these five years.
Owing to some dissatisfaction on the part of Kilison, tl
attiring of instruments and mneliines by him tinder
whip censed, but as to inventions it continued in aeti
irringtou and ins associates paying very largo sunn
eli of the livo years to Edison for exploiting tiioin, am
Ids part transferring to himself and Harrington as i
o several patents obtained by him during t hose years,
,v for tlio assignment of which to others permission wi
irringtou contributed in the first four months of the
ip $0000 more Ilian his stipulated capital, and during
urs fully $00,000 for general experiment at ion by Edisoi
•10,000 in developing bis inventions in connection i
tomalie line.
On April *1, 1871, Edison mndo a formal assignment
iglon, recorded May 0, 1871, reciting his covenants to
3 automatic and oilier fast systems of telegraphy, and
d perfect them by uddiny thereto such further inveutio
ility would permit, and assigned to him two-thirds of
volitions, and all ids inventions, mndo or to ho made,
may bo, applicable to automatic telegraphy.
I'liis last-named system was the first perfected by Kdi
ino between New York and Washington was estald
irk it. Ho continued, however, his experiments foi
'ding, and except ns to tests for long circuits, the in
w in dispute, were nearly all made and worked in 18'
Mr. Orton, the President of tlio Western Union Ti
"ipnny, while Edison was superintendent of the at
o, and in one of the shops designated by the Ihirringt
•ship, the rent of which was paid by the Ihirringt
light lie might properly givo to the \\ ostein
lieation of it, forgetful that this would “ m:
ninntic, li thing ho had expressly covenanted
licantinio, anxious to test this wonder! ill disci
ling himself for thirteen months deprived aft.
mised him by Orton, in despair ho agreed togivi
tlio Western Union, George 13. Prescott, oi:
liable inventions to obtain the very taeilities a
>lon, whose privity with Prescott at every ste
i'u ready assent, and suggested a enretnlly prej
hind Edison. Accordingly, on August 10, 18
iler advice of counsel, a previous agreement!
licit called Prescott a joint inventor with Ed
ght have tints got over thcditlioulty ot the Ha
„it, which was merely of JMison’s inventions—
e-half of his interest in tlio inventions to Prosi
i'he paper is conditional— not having oven
onso, for neither party can make, sell or use u
nsent of tlio otlior, and of courso is not on I ei
ligument ; yet it this paper, obtained without
dollar to Edison, or any otlior consideration
cscoit, upon which defendants rely.
the Qundrnplex to tlio Western Union, Edison rescinded tin
((i,J'rt‘3cott. and Orton agreements, oll'ered to return the $5000 Ic
Vl .i/?rton> 11,1,1 afterwards for n valuable consideration conveyed his
r7 interest in the inventions to Jay Gould, who assigned to the
on, plaintiffs.
■ Not only did the defendants have eonsl motive notice ol‘ the
Harrington rights and equities by the record of the deed of April
4, 1871, but actual notice sufficient to put than on inquiry.
On December 14,1870, by a paper, called a mutual release, I ho
1\ estern Union Company, reciting that they haven claim against
Edison lor damages for breach of Ids contract to sull to them said
inventions, agreed not to prosecute him for such damages, anil Kdi-
son released said Company from further payments for said inven¬
tions, nml agreed to assign to s.'dd Company whatever interest
the Court shall decide to be in him, and to permit J.’rescottto
assign Ins interest to them.
And this Court of Equity is asked by defendants to decide not
Vfc n,onc1 tbl,t tl10 plaintill's, who with their assignors, have paid
t a 4|01^ m-° 8,11,18 01 n,o,10y for the Edison inventions, including
I hose m controversy, shall go without remedy in this suit, but
| Unit an invention which they claimed was equal to that of
ffl -Morse, and would quadruple the value of the 175,000 miles of
lno?l° r, ,0n'rCSt01'n U,,i0l‘ Tu,eSrftpl* Company, shall enure
■ one-hall to 1 roscott, the electrician of the Company, who has
amor paid a dollar tor it, and is to transfer it to them, and the
i°i ' t0.lus Coo'Pnny without consideration beyond
Wfoi dammr os,<!‘U ^ h"" ’ “"‘l 11 ,'°lt'a80 of Klll8on iVo111 tlloi1, H'™*
^■Bsnv'imi^'iu1*1 10 so 8lmlllof»l a proposition, except to
:#Cm.rI onSqS;P1,0aI 13 1,0,'lml’8 novor bolb" bco" 10 11
TIIE EDISON-IIARRINOTON partnership.
,lg,'ecmci,t is ‘htod October 1, 1870, and is
se.,t its ,rol/n e VClV' 1,088 800"°r dissolved by mutual eon-
i 1 lu' 18,0118 only to be allored or mniliiin.i i,,. n.„
it IP, 1874, and 111 to 1 13 a few mouths later. (Tills Exl
s, folios 1P0 to 302.)
1' the partnership continual unlit thcn,plaintijh' equities are eo
tc , and there is an end to defendants’ ruse.
It is contended that Edison quit the Harrington shop, a:
it tho partnership became dissolved because mamifacturii
dor it ceased.
i'liu answer to this is — . .
Is/. Tho agreement recognized Edison’s partnership wit
r. Ungoin i it eti and expressly stipulated Unit t
ick, tools, and fixtures of the Edison-Unger place of biisnu
Newark should he allowed to remain therefor use lip the part
the Harrington partnership; so that it became a shop ot I
rtnership, where in fact Edison made tho inventions m<
to; and it was additionally covenanted that; it should not
cd by Edison and Unger us a place ot general liiaiinfactaro
: detriment of the Harrington works. ,
2-/. Tho partnership was twofold- miiimluetu g 11
nitons — the latter being its most important tout m o.
Under it Harrington and Edison were to be partners not . nor.
all kinds ot* machinery, instruments, tools, cte., i oqui ■ ^
o various systems of telegraphy,” but as “ owners in a
il inventions and improvements invented, purclinscii, o.
ined by them or either of them.” ... ,
Tho Unger mamiliictiiro was allowed logo on, mt
agio exception in “ inventions ’ ol tilling his co»H>v
old and Stock Com puny, Kdisou agreed to 1 j
mo and attention, talents and ixvbxtivb p°w.fcU?_ i .
2ss and interests of tho lirm.” Moro than th». 1 »
■ -«■. -m “7“ «: z iir«
;amst automatic telegraphy, no to so, t tlmt „
inauiI of Harrington “any invention 01 ‘f|
o useful or desired in automatic telegraphy. .. cd
Now the proof is ample that the pur ..er^U1 001,1,11,101
i inventions.” Edison so swears (Tills to io -• )• f !
Reilf. who had the largest interest ot any oi tho J « . i g
mm \\ c i»auhlim;l!y for exporimouts mid
.Mihoii down to September, 187-1, ad-iny no t/uc.sduns con.rrni,
llu:JiM of his rjsperimenln, between $90,000 mid $70,000, Mil
$1 10, 000 in developing his general in vunt iuiis in ooiiueetiou wii
Hie lino (Pltl's’ folio 1-iSO), and tins continuously, durum near
every month.
On duly 20, 1874, a few weeks only helore thoseennd I’ruseo
Agreement, Harrington paid $1300 for rent of the Uimoi-Mu
ray shop (i-lifs- Exhibit Z), where Orion knew the Quadruple
was invented, and to which ReilVImd taken severnl ollieers ,
Co” msm' working it /or them in the full,
ISfS (l.'llls’ folios 830, 1)37, MS I-, 7).
Ahout July 8, 1S74, tho very time when Orton refused to ion
Mison money, and, in fact, sent him to Harrington to get i
(Hells lolio 000, rill's’ rebuttal, p. 00), and while he and Pro:
colt were dying .without pay, to hind Edison up by the firs
agreement (Hells folio 920), Keilf raised $10,000 to pay oil’ Ui
gars mortgage on this jVcwurk shop, $7000 of it cashed hy 111
Harrington Associates in order to prevent Edison eommittiir
! ;!,^PNr!lr°nf;0fsullin- Quadruples to the Orlo!
paily (I. Ills iolios 1490-1500, 2277).
Ellison’s own eonduet shows that the partnership as to itiven
turns continued. 1
so2t,";;!f'llill,!'0,,'S8iS" t0 lra>'*’i»Slon,witl. hlmwir, thirty
o“ ", Wl"“h ™I",'0l, t0 automatic telegraphy, includim
roZ oo^iT ''! - - bit “82,l!” Wll’1*’ Kxliibit “ Y,”" anil
nd one 4 !)’l ’/0T ra,CntS WhMl *“» Motion to automata;
lele^;;,;;. 1 lmiy b0 al,1,lica magnetic o. dicmic.l
AnJ&i0 '"k !'.e001',<!0r’ Pat0llt0(1 iiareh 19, 1872.
r . L mi'S,,otl° adjuster, patented Jan. 14. 1873.
oral of his inventions wore disposed of hy Edison long
lie partnership is alleged to have ceased, to the American
et. Telegraph Company and the Domestic Telegraph Com-
Mr. Harrington grunting permission hocuuso they would
Edison a few thousand dollars, and could not benefit the
atos. (I’llls’ folios 1487-8, 2270.)
ion Murray (Unger’s successor) asked Harrington and Hein
mit Edison to sell the Quadruples to tho Western Union
hoy both refused, mid pointed him to the partnership deed as
ng their rights and covering all of Edison's inventions ox-
or tho Gold and Stock Co. (Hefts’ folios 102-tl.)
rriiiL’ton wroto Edison a protest, and sent him word he had
Id to make sueh a move, tho moment lie heard of his first
Knout to Prescott. (U. X. T. W., 1W folios 1408 and
i'lioro was no mutual agreement to that ell’cet.
Mo written consent — one or other rorpiired hy the deed.
Mo notice from Edison claiming to terminate it.
When a partnership is formed for a definite period,
neither party can dissolve it at will helore the expiration
of the term.
Smith v. Muloek, 1 Roll. (X. Y.) 509, and 1 Abb. I’r.
Rep. X. S. 374.
Hearpoint v. Graham, 1 Wash. C. C. Ilep. 234.
Honii v. Walsh, 2 Edw, Oh. 129.
'Peacock v. Peacock, 10 Vcsey, 50.
Cinwshny v. Manic, 1 Swanst. R. 495.
Gow on Partnership, 303-5.
lilloront principle is suggested in Bishop v. Brocklcs, Ilofl-
jWpo 11 lu"’ "x'uks nn,J More the second Prescott
S ii W 1,111,1 1551:500 ft,r '•Ullt tW U ngcr-.\hir-
i • I1 (H is Exhibit H), where Orton knew tho Quadruple*
"''M' 1{eil1' 1,11,1 t.,ku„ several ollicomof
t878 <iw U/or l'“"' tum
F.ltnn"1 J"ly 8’ 11,0 vc'0' l'»'° "'lien Orton refused to lend '
iM W» to 1 Iitrri ni'ton to got it
(l)tlts tolio 1.00, nils’ relmtlnl, p. ltd), nn.l while ho nod Pros,
ir-l u m";’’."'111'01'1 I'«y. to hin.l Edison up l.y tl.o iirst
( )U ‘H lol,° 02,l)> KuM1 miso.l $10,000 to nay oil' Un-
m...,.,,,""1' s"f° 0,1 ,/,is Xeieark shop, $7000 of it unshod by the
,1 * 0,1 ■''“oeiatos in order to prevent Edison committing
Q,,m,ru,te 10 ",u 0rton
iw»w,"S.co,,lluot sl‘°"'s th"t m "
>ovSontputonil1whi°l Irn,,,,illKlo», with himself, thirty-'
mo nw .Six *ci , r- :i l,‘ 10 am°ma,iu ,u,^“i^-
„,c f01.' I) , "Ji" r^alei* to automat io tolei^nijiliy, iticItidiiiK
Duplex n>ri l?,,‘icali ^n!f M,c itttiomaiic appliaition of the
mil one wl, l ' V'"ents w,Ml have no rMo“ lo ontoniatic,
olosnjj' my |J° aH,Ii“» either to nm nolle or chou.ie 1
An oSium '"k ,'.ecorilor> 1'i‘tentod March 10, 1872.
'ii ciectnc magnetic ndln.i, . . r ...
When Murray (Unger’s successor) naked Harrington and He
to permit Edison to sell tho Quadruples to tho Western Uni
Co., they both refused, mul pointed him to tho partnership deed
delining their rights and covering all of Edison’s inventions c
cept; for tho Gold and Stock Co. (Hefts’ folios 102-0.)
• Harrington wroto Edison a protest, and sent him word he h
no riphl to make such a move, tho moment ho hoard of his 11
assignment to l’reseott. (B, IT. T. W., Pills’ folios 1408 a
1400.)
Upon what principlo of law can it bo claimed that tho pa
nership was at an ond?
1, Thoro was no mutual agreement to that ollbot.
2. No written consent — one or other required by tho deed.
0. No notieo from Edison claiming to terminate it.
When a partnership is formed for a definite peric
neither party can dissolve it at will beloro tho expirati
of tho term.
Smith v. Mulock, 1 Boh. (N. Y.) SCO, and 1 Ahb. i
Hop. N. S. 374.
Poarpoint v. Graham, 1 Wash. 0. C. Hop. 284.
Honn v. Walsh, 2 Edw. Oh. 129.
Poncouk v. Peacock, 111 Ycsoy, 50.
Grawshay v. Manic, 1 Swanst. It. 495.
Gow on Partnership, 803-5.
A different principlo is suggested in Bishop v. B rookies, Hi
man’s N. Y. Ch. Cases, 584 ; Skinner V. Bayton, 19 Johns. H
. con.orin.ty ,v„l, the- rulu of the- common
V'T'1 'U Iial'.",e,'lil,il' irt « Hxc.1 l-eplcl, it would
, “ ^ 0,,cu '"juriout! ,n ]ionnit „„>•
ii ml thcrel !• '• , °" '! i ) ' C,!S.“ 10 10 vi,:llltu »''« engagements,
r p jeojuu (I izo it not flumticu tlio wlmlo objects
for ,i V'1)1 "T 11 ll,uru 1,0 »"-V real and just '.'round
in* Hie abandonment of tl.o partnership, „ „fc,/uii,
is (0,00 #n/ to administer suitable redress.” '
T ,,cci;lcd in *'erren 3-1 /fc». iV. r.
saill n if ,1 ’ V“ ?I?CS !M'U l',,ll-v ami the judge
301113 to « court to procure « dissolution."
tlio iiaHeuf llavo iatorfored in n enso liko
invention' ’ T0 ,am"sl0|i "'as entitled to twothints of tlio •
.S Td r I" t0 . . . alaI >•»<) overpaid his
v iv " ',K,k"'- """* 1‘eavy out In vh .0 a partner who
0 0 ?" H Wi"' ""•«<*« in relation to 'a minor tea-
° tl,U "•biol, was afterwards uhandoned.
“I'.ven under tlio Iioinan law,” says .fudge .Slorv,“ this
>1 important qnalilleation is annexed ‘to a partner’s
>, " L to tl t t is limited to eases where it
3? n°! °-f ,hc Puller, but ,he pari -
be d M i ',"t "■ 81,0,11,1 1,0 dissolved,” and such ho
In* law to he in this country. Story on Part. 2i(i.
of IIarrinyton1-IO,'ind'°1'’ n° v,ol!ltlol‘ 01 tl*0 articles on the jnift
/NffJ'SlS'TJf0!*.18.71 reoilM tl:at Ua,'H"=i0" iaai
him." ^ C '■oocmnt.i unit stipulations enteral into bp
1
ICitlior party may authorize or sanction a departure
from its provisions without varying the contract itself,
or forfeiting tlio right to insist on its porfornmneo in nil
other particulars. American Leading Cases (Ilitro & Wal¬
lace), vol. 2, p. 771.
1 ho protenco remains to ho noticed that tlio partnership be¬
came morgoil in tlio assignmont of April 4, 1871.
The assignment creates no such merger, and against ovon such
an inl’oronco stands tlio fact which no arguiiioiits howovor spo-
cions can ovorcomo, that for four years after this deoil Edison
continued to assign to Harrington with himsolf his patonts for
lnvontions which had nothing whatever to do with automatic or
any system 0/ fast tcleyraphy, and that ho obtained Harrington's
permission for tlio salo of other telegraph inventions of liko
character, assigning none whatovor to other parties, oxcopt those
in dispute to Prescott, under an agreement which ho has sinco
resciuded./<%^r..
As it is proved, Qoorgo Harrington in tlio first few months of
tlio partnership oxpondod fully §9000 moro than tlio capital ho
wns to put in. I11 view of this, and in contemplation of $200,000
to ho expended by tlio associates, it wns most natural I10 should
wish for a moro doll 11 i to conveyance of tlio inventions, tlio ex¬
ploitation of which wns constantly being mndo by Edison, than 1
moro articles of partnership would assure — and an assignmont
was accordingly mndo by Edison to him on April 4, 1871, and
duly recorded, to cover tlio legal ownership of tlio inventions until
such time as their maturity should entitle them to ho patented .
and assigned.
Tlio special .field ot these inventions (included with “every
1110 automatic was tho first fast Hystem ilovolopod by I'M iso
mto practical use, anil tills ami its possibilities were particular!
referred to in tlioassigiiiiie.it, but the development of every otlic
fast system of telegraphy was covered with equal distinctness.
. * ‘J10 knowledge that the partners! p deed included in
volitions in every system of telegraphy, ami of tho more thin
faithlul perforniaiico of his covenants by Harrington, it nlmos
borders on oflrontory to nsk that a Court of Equity sliall con
s rue the words, “Little or other system of nntonmtio or fits
Bystem telegraphy,- ns applicable only to automatic- more espe
cinlly when the parties nsking such a construction expect by il
to obtain an invention “ second only to that or Morse,” from tin
inventor for tho sum of $5000.
Tho effort is to mnko tho sontonco road « automatic or fast
, “",trui"B fast ns the synonym for automatic.' II
nr 1W° '/n( 8?.' 5lle "'ort'9 aro> "other system of automatic,
or last system of telegraphy.”
or “.min'"?"1.!0"8 T'ostion are an improvomonton “duplex”
to” nifl "m 'i’ °r °n" *)0 usofll,ly added to or mndo “ appliciihlo
^a,0'"’ or t0 otl,ul' fllst system of telegraphy, then
4 1871 Y, b\d°}'9 !‘C ‘"“lor tl'is assignment of April
i , n i i or without reference to the partnership deed.
JlrW?* ‘i’0 Onndruplox is “applicable to nntonmtio
Oleg „P by, defendants lmvo stminod every nerve to prove that
i,.®1,; "° notls° ot those words in tho deed, because in record-
tolntrrn. l "°ri T’ t*‘e .so,lto,lco “applicable to automatic
a , tVr mmunl llrinters.” being blurred, evidently by
a lmu in the quill pen, was not copied into tl.o record. How-
J y ^II0 "?r<* “or” 's i'1 the deed ns stntcd— and il is— the
K,,votico> ti10 y
O fa . 11 1110111 ns soon ns tho inventions woro made.
„'8 ll“8,ue 1 lllinS »s “automatic telegraphy mechani¬
cal printers,” and defendants well know it.
snvs “ fjllri! •1° nm('0 ,t'10 “ssignment, ns well ns tho inventions,
name • i„, “ "° ?Uch tl,inS bearing that name ; it is an absurd
name, these copying printers wore not tnln,
3n. Tho context bIiowb Hint a construction which confines tho
grant to mechanical printers is even more absurd than tho name
thus attempted to bo given,. for in the same sentence Edison assigns
to Harrington two-thirds in his said inventions (relating to
automatic or other fast telegraphy, and all til it can lie added
thereto) “ inct.uuixo my inventions of mechanical or copying
printers,” which printers without such words could not linvo
b<4m'' It'ubost, liowovor, that this flimsy protonco and quibblo
shall be forever sot at rest, and that tho court slmll bo no longer
besot with it.
Strike from the deed the lines in which th.s formulab m l
“or” belongs, and you still lmvo its full equivalent. If qim.hu-
plox nnd duplox aro in fact applicable to automatic, thou
English language contains no stronger words to entitlo Ilm i g
ton to thorn when invented than those which remain m the deed.
It recites that Edison, in consideration, among other tilings,
of certain covenants nnd stipulations to bo fullillod y n
Harrington, “did stipulate and ngreo to invent and consti ot
for the said Harrington full and coinploto sots of i: t ime ts
and machinery that should successfully nnd economically develop
into practical use tl.e Little or other-system of automatic or fast
system of telegraphy, nnd subsequently to
bucIi instruments and machinery nv adding TiiEiurro from ‘ i o
to time such further inventions as experience should denmnd, aM
my ability as an inventor and electrician might suggest and ] e,
and stating tl.at Harrington had fullillod all ot Ins oovoiiants
conveys in the habendum ns follows i How I, the said Ld on,
“ hereby assign, set ever and convey to him, the sa.dllanmg-
ton, two-thirds in interest of all my said inventions (ro eii ii S
all those mentioned in the premises), etc., and of a I ,
for all such inventions and printers, whether a ion y >
applied for, or to be hereafter applied for,” and lie
rington his attornoy irrevocable to sell, transfoi, an )
his right, title, and interest “ in and to any and all o V « J
inventions, and tho improvements thereto, w lie ioi w <■
^ iToUher Duplex or Quadruple*, will improve or pcrfcel A uto-
matic — if either is a further invention which can Jn-
aueh as experience should demand, or as tho a y
"Worn, mu) improve and pc,
Hocauso, m like inm.mir, they
;t 1,10 Automatie system of fust ti
",l<1 cnl> bo Successful I V mill cm
) mm economically dcvcloj
nf fust telegraphy, thou mi
I'fcct it.
will ilovolnp, iuiprovo mill
olegruphy, mill nro ii|i|i!icu.
moiiiiciilly mhlcil to it.
»Ln Tf lC?U'ie,t}>s,','enlifc s/an, lent hy which miy purlieu,
n ol telegraphy is known ns the fust system Pole,,.
. "Ht l"'ovo ""el* « technical me, nine, and evideaco l.y
»l>on tins point was withhold’ or excluded from the
so cduimed (Frond, Kx posit Son Deports) that ids system
"Sici ly taster than the Automatic.
:»tHer r t!',‘ n“tU'"omH « *l«»hr claim (hotter to
istor-Cionoral, Dec. 0, 18751, Pills’ Kvhihit 3D
PIM^' tdio'iniT''111, 8 Alll01,mtiu "Pdom was faster tliaa
d ms loho 10-J7 and H08).
iKumont ^"‘""'utio, and who used the word in
tho Automatic mw/,1; tliH^syat o,ii!>^>Ua ** °V°‘’ ,,#V°
disputes that tho Duplex and Qiiadrunlox are fast
nary Morse, mid so when tho current is liicreaseu uy
sending” (Pills’ folio 448-1). . clli
less, yet it travels many thousand miles m a «*°» • 1
error to suppose that any advantage is gamed hy t’'o lolo l‘ ‘
furoneo in the speed of tho electricity in any one system ol
1 m to vor °sy stom will, in tho praetieal daily workiiiga of a
tho ordinary Morso method, boeoincs a faster system.
Telegraphs are either electro-, nagnotiom their -cording npo;
ration or electro-chemical— being divided als
mission into two classes, manual and nutoniut.c and st U
thor into simplex or single sending, and multiplex ■ 01 ^nb“
sending (Dofts’ folios 1452 and loOO), wh,*I' y
applied either automatically or elcctro-inagnctically .
The speed of tho Morse system is limited by tlio 'l_
is oleetro-iungnotio in comparison with t o c rorordly
bJZ S: SZ to 'lieiwmul Understand', but of the
0^T™o0ear0eMrrond107B,<ta^fo'wordB a w?th°n
a good working speed (Pills’ folio 408). ]S„g.
. By tlio Whoatstono Anton tic uhu.1 <■ 0l00tro-
landj the recording is not made c'10m'™ > ’ d J 0 1, , tl
magnet at the end, which works very last, an - t
, ,-tlecapacity to receive bmng numb gma|e, , mal^ ^ „y
invention of lulison mny bo l 0 _ ^tg and 2394).
tlio present Morse Sountlor lo 10s* - 8|oW for the
All these methods, however, had been found too
""‘o-atic,” mid the « Double sending," t h 2
the So till 1 T2 tU'!a.]Wl"r] “"M " to speak^lo
being provided for ^ 10,1 rn^*^ ^ceoption mid recording
l«f, Xi-im'"' d"”K,,"> ‘“"I"™1 ™"
clcetrioitv (Vn„, .1 tlltlt clm'go or nceiiimihition on thowiroof
Dv tbo Diml 101 1 10 transmitting station.
n„J2 taSu!?™ tbocurront is ao nentrnliaed that aig-
receiving instrument nl n'° fwtnnt st!*tion witliotit affecting the
in Morse whore nil n 11 1,0 borne fitiUion— which is the difficulty
Biirnnls of onoh nt 10 reC?,v,n® biatruinonts respond to the
bo” sent I ^ 2"'' t,,M* Uv° «' messages may
accomplished oX 2 2‘T "“nont «»■ «"»
Implex,” ln,t nn -l, (i"e A ‘'"w/l0M< 'uul was called “Con-
<Mn £. hi th° !• 1o.,o in the same
message to^nd*1*0 .B'*.'st01!1 ut0issecl tlio wiro by presenting the
2 . reco,v,n* itf™' ‘he lino r«,,4U that it is
ol thcunZ independent of the velocity
i-y^ndS'E “1’,i8h0lI t,'.h resuIt of > «I 1' « ^
Doth wkiib WST-^botT womT "* thy?ame inS,anU
1871— both worn in fi * . \,cro ln W0r^,no opomtion be foro
mcntiiiff to imnmvft *?r 1"a,K;^’ an<l Edison hud been oxperi-
I . ' l °"Pr0V?lMi l»rfi»t both bofero Ilnrrimrtn,, on/nrnd
rally used by Buhl, the niessngca ncin0 . ,,
:nl paper, and transmitted either manually, by mem. so Mo,
key or automatically by perforated paper; and it Ik ,«n o
p led in this country about 1850 (Dot s’ ^2 £
(fills’ folios, 477-8), and this Little system ot auto » tic, £{
it appears worked very imperfectly, wiw to improve
mont as one of tl.o fast systems wl icl 11 so l
11 The earliest efforts in double transmission^
Gintl,an Austrian, about 1858, but lio did no 1 llor80»s
for the continuity of the circuit, without ^iLntly. 1Iia
cannot send signals simultaneously and > > el “ ’1^
method was “contraplex” or in oppos, ° of
used between Prague, nail ^ lomm- J improved upon
Hanover, and Siemens anil Ilalsko, o 2"'’ . uncos wlncl,
Giatl’s duplex, by introduemg rheost tats or resis turn ^ ,.or n
partially overenmo its diflicultics, am a . imrotUs,
few mouths between V ionnn and 1 riorto bj t o jo l
wbicb was improved upon by Stark, o '« • method of
In 1858, Moses G. Farmer, of Bos on, pate ooutaiuing a
simultaneous trausmissiou ,n opposit . \voro oxpori-
Jomloa l,80(1’ros'
eott’s Electric Telegraph, 700 to ^0). tnl flirthor ini-
In 1808, Mnrou and Mayer, both li ussin , .
proved Gintl’s lnotbod. , _ , , ;n simultaneous
In 1808, Stearns, of Boston, cxpenir o to > n , win
transmission from opposite to ’.'^nos ,l0(i_i33; Prescott, p
worked on several oireuits (1H“ f01. 80Voral yean
(Mils tolios, 4, );>-<). I hoy were suggestions of n fast system—
ol' tliu development of duplox. ItnL contraplex or duplex was a
Kill-known, practically worked fust system of telegraphy, although
yut imperfect in 18U8, when Thomas A. Edison, of Newark,
published to tlio world in tho Now York Telegrapher, of April
11, 18(iS (I 'Ills’ exhibit 11 Q”), the deseription of his improvement
cal led the “Double transmiller,” hy means of which “two cur¬
rents may he transmitted in opposite directions at tho sumo time,
on a single wire.”
Kdison was n laborer in tho snmo field with Stearns, and at
the same lime, for rapid transmission hy “ Duplex” before heed-
templed the “Automatic” (Pills’ folio SSI), and it was one of tho
last systems already in existence, tho improvement of which hy
bun was contemplated hy tho partnership agreement, and hy his
assignment to Harrington of April -l, 1871.
The Duplex a fast system.
II <r intent wow nee lei to prove duplox to ho fast tele-
graphy, defendants furnish it.
fao York Times' article or .Tilly II, 187-1 (Pills' exhibit
N lohos 1-1(12 t() m(!s)) vvl.Ul0„ llnilorJbo fll,Ilon.isi . . tll0
iletendant Prescott, tho electrician of tho Western Union Com-
P""y, and shown to Mr. Orton, its President, before its publics-
tion (Dolts folio 00-1), says : “Morse took the first great step in
telegraphy .... tho objection to his systom was that tho trims-
mission o a single message occupied tho wire entirely. Stearns’
T-, w“ tl10 8000,1,1 SMt stop, and it instantly doubled the
capucy ai every wire which ever had boon erected.”
DU Mr. Orion speak for his company.
‘Mr. Poilf and I rarely come together without discussing tho
speed ol our respective horses.”
‘‘The automatic was his fast horse, and tho duplex and its possi¬
bilities was mmc” (Dolls’ folio, 087).
<™”„ D“- «■ 1S,S
was to improve tho fust ‘iTu'cm iokoi-CtT.o'’oloct^ici ty which
U,e cavity* »<« J ^ charged the wire mere
accumulates on it.. J |V for work,
quickly, and thus * j lhe wire to transmit hy
The Duplex .««««« brents charged from two
neutriili/.iug, on the w o „0 110W devices to dis-
instruments at the sumo i w ,10S — 1:33-D). .
charge tho electricity (l His t system, and in
11.UO is no doubt that ^.vflSTlvns made,
existence when the ; vu or,;„g to Kdison’s Quadru-
As stated in the Tunes “ ", ^ upjllkd l0 the
plex, “ Nor is this all. the old da d a0 tlmt tho title to
new system,” (see also .l.*i-oacott a k. D ^ -Morso application
the inventions (Juadruplex an ^ cu80a) ia thus vested
X;S”, SSSi-’"""1'’*
- , vn tMTPLDX INVENTIONS
EDISON’S QOADUOPLKN aUT0MaTIC.
PhdntUl’s’ Exhibit '' ^ovomher ^
• mix Oiiumicai. Tni.H««.A1'“s^ltiiIoh 18] 18-3, and it is assigi
The Bpeeilieation reads I nu k tho messages
luitting hy ends of the line.”
Chemical paper at tho icsi _ U,u 1(
88SP* .
iionst riitucl t lint Case “ 0'.)" is ii]itilic'nblo to Autonmtic us well us
iy Morse instruments.
Funner, himself, a witness for defendants, and a justly eelc-
i) rule'll electrician, frankly admitted, on cross-examination, that
the Quadruplex Invention, described in “ 00,” mny ho ‘'either
electro-magnetic or a chemical one” (Pills’ folio 1508).
Ed ward H. Johnson, for twenty yours a telegraph operator—
tho manager of the Automalie Company, and an electrician of
groat experieneo in the practical working of Autonmtic tele¬
graphy, testifies most convincingly that tho Quadruplex is prac¬
tically and economically applicable to tho Automatic, and of tho
greatest liso to it.
Before examining tho utility of this application lot us see
What is the QuADnui’LiiX Invention.
To understand Edison’s Quadruplex Invention fully, it is
necessary to look at what preceded it in methods of “double
transmission," or sending messages by telegraph in tho same
direction over a wire at tho same time.
Farmer (Bells’ folios 1-170-J) says: “On tho Duplex of Stark
and Kramer and Dossclm and others, there wero two indepen¬
dent operators, operating independently of each other, one. ope¬
rator sending tho current of a particular strength , and the other
operator sending tho current by a larger strength , perhaps in tho
same direction or in opposite directions.”
In Bossclm’s method, when tho operator sont a positive current,
the other oporator sent a negative current of greater strength,
both being transmitted simultaneously, and the resulting current
was the difference between the two.
By Stark’s method, lie sent two currents of different strength,
both in tho same direction, and the resulting current teas the sum
of both.
Sabine and l’rescott, in their works, agree that these attempts
wero useless in n practical point of view.
Neither Kramer's norBosselm’s machines would work to send
messages (Tills’ folios 1231-1237-8-12411. Tho difficulty in their
( 1 ' They vr o r kcT part of the time without a current, when s,g-
" great' discovery is O^rfbed \n the M
|Tnu1Snutti,.g«^-.^in-^--.|is^ ot: ,l0
direction and at the sa increasing or decreasing tho
battery current, and Tiihjwiii.ii ij
current from tho 0 ig g01lt by transmitting a posi-
In other word^ ° “tuuent »twags to alfect the polar, r.ed
tivo current or a noguu\c .Wroaso of tension—
relay— and the other °"‘ 0f each other, and all the
no nintlor wluch-p«;u tj - f_u-lthol. positive or negutive-so
lime there is a current on the n l. instrument being
the signals never can bo J»'»J*rU of tll0 c° ..oat indie U U '
1 ,0 to. Ot J 1 1 I, a.
Kramer, and Bosscha n.-ctlio. utinns. one operator ,i
“Edison has combined tho U operator incrcusi
plishcTtomy knowledge. In |t° ,u
sr'Sr: asr:-— ?*-—
(Belts’ folio 1529.) _ article say: “And not t
The defendants n 41 0 1 ^ L0%e i is that it calls lor
least recommendation o U8C,i without tho need ot any a
etnimrcs: the old Morso key is usco » ,,, ,m mi„
tlicir maturity entitled them to bo imtonted, no matter want
Bystem ot' telegraphy thoy should ho applied to; hut this Hist
claim of “00” contains the very essence of the Quadruplets in¬
vention. It was a discovery, the very statement of which indi¬
cates the method of attaining success, and tho Patent Olliec very
properly declared it patentable.
In Ncilso n v. Harford (Webster’s Cases, 870) tho patent
consisted in tho application of heated air as a blast tor
tiros and forges, in connection with a discovery of a new
property in tho article of lead, but claimed no particular
form of apparatus for heating tho air, although it de¬
scribed one. Defendant employed an apparatus superior
to that of tho patentee, hut as it involved the principle
of tho plaiutilV’s invention, it was hold to ho an infringe¬
ment. In such cases the machinery employed is not tho
essence of the invention.
Curtis on Patents, § SI.
In Foote v. Silsliy, 2 Blntehford, 200, where tho decision
in thollothlast cases is cited and approved, Judge Nelson
hold that whore a person has discovered a new application
of some property in nature, never before known or in use,
by which ho has produced a now and useful result, the dis¬
covery is tho subject of a patent independently of any pecu¬
liar or now arrangement of machinery for the purpose ol
applying this now property, and tho inventor has a right
to use any menus, old or now, in tho application of the
new property to produce the new and useful result to tho
exclusion of all other means.
Foote’s patent was for an “ improvement in regulat¬
ing tho draft of stoves,” tho first claim being for “ the
application of tho expansive and contractive power ot a
metallic rod by different degrees of heat to open and close
a damper which governs tho admission of air into a
In MeClury v. Kinyslanil (1 Howard, 202), the thing
was liem to iju n 1'“"- .
devices tor its applic ‘ , ^d out by oxpcnmci
nature ot discoveries, c which, when one
Tho caso ot McGlmg • t , illvo„tion. Tli
to elucidate this pocul » f wnter that where
workman observed 1 ^ ol> t)l0 bucket, it act
tered at a tangent to tho . , , :t n<mroncho
n circular motion, \J.ouUl b
centre where sh’iiw am t tW, observer tin
contra ted. Ho tno g 0f nature might la
application of Has pn ( . iron rolls, and on
lichiUy made to tl o «»ti b to devise a p
nested, it reiimrcd no si, ill ounvci
so, e ot j 2 10 ot illl Hlcailleled
notisiUj any dWames, kind «
now devices were needed. If Kdison lmil died after
tiding liis invention, ns in tliis claim, any skilled elect ri
d have applied it either to .Morse or automatic.
. was eminently a “discovery” such as Congress lias an
d patents tor under the express language of the Const it til
hero was a strenuous ed'ort, plentifully aided hy hluckln
si rations, to prove that the iilcHtiml tlcnice* in the drawin
c 00 cnimot he used to work Quadruplex automatically,
aidants might have spared themselves this trouble,
position was a self-evident one. But ail the scientific
ics agree that hy mechanical equivalents, it can he wot
nmatically, and the ehumicnl Duplex patents and Qua
c Caveat are stuhhoru facts which cannot ho ignored.
Idisou, the inventor, says (I’lliV folio 101M) “the mixhnnis
c 00 is the .Morse application of the principle,” and Kxl
TMisou’s drawing with Quadruplex Automatic current) is
mictil application of it.
t •gain (rills’ folios 1222-3) Kdison is asked, “Take
cation of 1)11 just as it stands, does that thing sueeessfully
itomictdly develop into practical use the Little or other sy>
LUtomntic on fast system of telegraphy ?
Mis. If you confine it in Hull my (Morse), of course not.
lues. AVImt would you mid to it to accomplish that resit
las. Automatic tuaxs.mittixo ami mtouivixo ixstiiumkxt
)efondaats’ own conduct disproves thoir holiof that they
down these inventions to thoir elect ro-nmguotie leal
ay own b teams’ patents for Dunlox teleirratdiv, and all
S^ri^ndn^n, St bo
>» should tiiko out I*™’"
- *»“ “
Morso transmitting and recording instruments.
•!“ ;;
j|“ i" o“Z . b.t™" Ml'** “!
to Morso. . . , nli ti10 nnnliontious for
tolii8 Bl.ophy Ke.il, sail Q„miruplox Automatic a
cause them at, Uio very moment. a loss ol .'jIUU,0UU. (nils’ lolio
1 20S— 1-108— 1 -10IJ.)
It was of no avail. On August 10, 187-1, so Jar as he could, li
lmrloreil away ouo-lmlf of liis rights to Prescott to obtain tli
facilities withheld from him ami got the Western Union Con:
pnuy ns a purchaser — and not until Orton, in January, 1875 (2
months after their lirst interview a hoot. Duplex), still kept him «
l‘"U, did Edison reseiml his agreements with them, which lookei
to the sale of the inventions.
It only remains to ho shown that
Quadrujilex is usefully applicable to Automatic.
The sophistry of tho defonoo upon this point, all through tli
case, has been that Automatic telegraphy is very fast, and need
no such adjuncts as Duplex or Quadruplcx. This was impressei
upon the Court at every turn, hut was utterly disproved. He
fondants’ counsel asked whether with tho Pain instrumen
10,000 words a minute could not ho sent, and “ is it not boyoui
calculation. It appears that while, by using a polarized relay
it may ho possiblo to send 600 words a minute when tho mess
ago is already perforated, tho average working speed is from 71
to 100 words a minute. (Tills’ folio util.) Johnson, who workei
it practically for years, says you cannot send by plain Auto
"■ntie a distance of 500 miles at a higher into than 200 words i
minute, and that the average is not more than 80 to 00. (Tills
folio 288-1.)
Dy tho rapid signidlimr in Automatic tho wire becomes stati
f. or other signals, or in fixing up tho machinery, iho long
d of paper has to bo coiled up, or tho paper may break at
transmitting or receiving end. It may have to bo repeated ;
pen may not mark; thou there is a tendency ot the marks,
dots, or dashes, on tho chemical paper to run into each othor,
ed “ tailings.” (Till’s’ folio 2004-5.) Owing to the delects
tho system, receipt of the message must be neknowhidged ly
oporator, which is not necessary in Morse, and ij lias has o he
e automatically, it takes „ el lo e . tie pop o m
din* tho “O. I< tl it tl o i to o tn ns on (1 Ills olio
10), and you cannot signal back till tho oporator stops sending.
['hose' 'delays' caused Morse, in his report on Telegraphy as
.nmissioncr at the Paris Exposition, to claim tlmt t ho. Auto-
lie was not so fast as his own system. It .. true that M -
i’s inventions and improvements in Automatic uul no hen,
now nlaccd it in tho front rank, but wo find Mr. Orton, as
ely'as in his letter of December, 1873 to the Postmaster
neral declared it to bo “slower than Morse, and that it is
t attempted as a separate system, and is only used in England
signal hack has largely. contributed to its success.
Ilfs’ folio 2123.) It prov lo otic ‘
iking tho signals and oorrec ions ol n ™ w
pting the automatic transmission, "inch can g
on tho neutral side Automatic, on the , a8°00
successfully mi'/ economically develop tlie Little or Edison sys¬
tem of Automatic telegraphy, which is chemical. The Duplex
and Quadruples are also usefully applicable to 'Wheatstone’s Au¬
tomatic, which has a magnetic receiver, and to one lately invented
by Edison.
The advantage gained by this application would he in propor¬
tion ns the capacity of the elect ro-mngnet to receive is greater
than of a Morse ojiemtor to send or to write out the signals
when received, which is fully 50 pier cent. (Pills’ folio 2304,
also 1751-2.)
Finally it is not denied that Edison is equitably bound by his
covenants in relation to Automatic telegraphy. In that respect, at
least, it is admitted the assignment was intended to carry out the
stipulations of the partnership. Ilis agreement was to invent
nothing which should militate against that system, nor to sell to
others without consent of Harrington any improvements that may
be useful or desired in Automatic telegraphy.
That the application of Qundruplex to the Morse system used
by defendants will militate against the Automatic system, to
which, either separately or side by side with other devices in
public use, it may bo applied, is too plain for argument. As
Harrington refused his consent to its salo by Edison, and he and
his assignees desire it, and consider it useful in Automatic tele-
grnphy, equity will not take it from them.
Defendants' alleged title.
IJeforo considering the legal oll’eot of the partnership deed
and the assignment by Edison to Harrington, and Edison’s power
ot attorney to Gould to whom Harrington had assigned, it is
best to state briefly the claim sot up byMlofendants.
lovclopmont of ideas entertained in 181 1— wo see no just
•onson why it should not be considered as Asswsnii mid
fruited to complainants ns stipulated to be done.”
’ In Jlailroad v. yWwiMc (tO Wallace, 3(57), u grant by a
patentee of an extension before extension issued was bold
o carry the legal ns well ns equitable interest in tbe patent.
I'lio scope of the decision is very broad. J. Swaynu said,
A deed for all tbe right and interest bo has in tbe tnven-
lion, and also “ all right, title and mtcicst which si o mi
secured to him from time to time to the full end of the term
for which letters patent are or may he granted, carries the
entire invention , nml nil alterations ami improvement s in the
invention, and all patents therefor, whensoever issued, and
extensions alike.”
(Jaylcr v. Wilder (10 Howard, 477) is to the same ctlcet.
Chief Justice Taney deciiling that the discoverer ot a new
and useful improvement is vested by law with an inchoate
right, which ho may assign.
Jlugglcs v. Eddy (5 Fisher, 581), assignment before ex¬
tension by Stanley to Haggles and recorded. After ex¬
tension Stanley assigned toKddy, and Haggles sued hddy.
Held that tbe right to the extended term passed to the
first assignee, and that ho look the legal title. For \\ ooil-
rulV, Judge, “The assignment is ot the imi.ntiox. and
not of tho letters patent, and the words to the lull end
and term for which letters patent are or mag be granted
show tho intention conspicuously.”
Nicholson Pavement Co. v. Jenkins (14 "Wallace, 452), in
equity, Judge Davis said, An assignment in an invention
hn contract, and like nil other contracts is to bo construed
so as to carry out the intention of the parties. Tho in¬
ventor had a right in certain contingencies to a renewal,
and tho assignment vested tho estate, right, title and in¬
terest in the assignee to the extended term.
The last two eases were not between the original parties,
mt against subsequent assignees.
In Oibson v. Cook (2 Illatch. 144), which has been cited
by defendants, the Court merely held that the first ns-
A late decision of tho Supremo Court on tins important
question settles tho point against defendants.
It is in Littlefield v. Perry (21 "Wallace, 205-220), a caso
remarkably like tho one now before tho Court, Chief Jus-
lice Waite delivering tho opinion, it was held that “An
assignment of an imperfect invention with all the improve -
incuts on it tho inventor may make is equivalent in equity
to an assignment of the perfected mulls.”
In such ease tho assignees bocomo in equity tho owners
or tho patent issued upon tho invention when perfected, and
if tho assignor takes tho legal title, ho holds in trust lor
them and should convoy.
« it is clear also that the idea which Littlefield had in
mind, and which ho was endeavoring by his dcv.cesto
make practically useful, was giihatku bconomy in tho uso
of inflammable gases of coal to produce coin us lom
(Kdison’s endeavor was greater economy by adding to tho
U1ItLisJnot important that tho pntent which had thus
been obtained was not in fact suited for thatpurposeread
Fd Ison’s ‘ Double transmitter,’ and early Automatic ox
nori, neats). Tho subsequent devices, better adapted to the
Ld to bo accomplished, may, therefore properly be it-
garded as improvements upon the original invention, fihoy
i, reduce a stove doing tho same thing which tho hist uis
intended to do, tut doing it better. This is the properoil.ee
. -
ibitHu only. In respect to tlio latter the assignment
no positive operation to transfer in pncscnli property
hings not yet in esse ; but it operates by way of pro-
: contract to take effect and athwh to tlio things as-
led taken and as soon as tlioy eomo in cssc.
Mitchell v. Winslow (2 Story, 030-9).
Lord Ihirdwicko in Wright v. W right (1 Vo-
soy, It. -100 to 411).
\n assignment for a valuable consideration of demands
ring at tlio time no ae/iint existence, but which rest in
loo'tnney merely, i is valid in equity aa ■ an agreement,
l takes effed ns^mfe-nssignincnt when the Jew anils hi¬
ded to bo assigned aro subsequently brought into ex-
0 jVcte York (2 Soldon It.) 179.
A court of equity will uphold an assignment ot a bare
•sibility. A power of attorney containing words sliow-
; an intent to vest Bitch an interest, is sufficient. Hero
equitable assignee of a hare possibility, not tlio subject
a grant to transfer legal title, was preferred to an at-
diing creditor. On decease of the intestate, the claim
the assigneo became a vested right, capable of equitablo
forcemeat.
Mover v. JZycleshciincr (4 Abb. 17. Y. Ct. of
Appeals, 809), affirming 40 Barb. 84.
See also Story’s Equity, 1040 ; Spencer’s Eq.,
ot supposed tlio defendants seriously rely on the claim
Western Union Telegraph Company ; at best it would lie
.,,,w.,i,i„ „,,,i rrivo wnv to the tirior enuities of
All tlio inventions, 94 to 100 and 111 to 113, wore made loin
bolbro A ugust 19, 1874.
As early as February, 1873, Edison gave Orton a book of din
grams (Lefts’ Exhibit 9) showing tlio principle and a number o
tlio devices in cases 94, 97, 98, and 99 (Bills’ folios 1137 nm
111 10 to 1155). .
On April 28, 1873, before going to Europe, ho appointed Mills
his attorney to sell to tlio Western Union Company eight Duple:
in the hands of Mum. ft Co. (II., one of tl om, contain, th
principal features of 99), and live in the hands ot Sorrell (Lott:
1 JiiMc Jilt of 1873, deprived of tlio facilities of tlio Wester
Union wires, which had boon granted him for twenty-two nigh
when tho operators wore not using them, ho 1 1 1 1
the Quadmplex in his own shop, and there exhibited it to sovori
officers of that company who wore brought tlioro by lvoift, ah
■ worked it for them. (Bills’ folio 830.) .
Orton says (Doits’ folio 521), “Shortly after my return froi
Europe in May, 1874, 1 was informed tlio Quadruples expoi mien
during my absence had been especially successful. _ .Those oxpoi
n,0„ts, ns it appears, Edison had boon conducting m Ins o\v
8l'on May 19, 1874, Orton having neglected him for tlnrte
months, lie wrote Brcscott : “ I have a number ot Duplex co,
binations, and dislike to loso all tlio tuno I have given
perfecting them,” and, only asking facilities to test thorn, oftoi
him half in tho hope Brcscott might iuduco tho company
purchase thorn. _^efta* MjlbU “ 14.’*) n|,ng ,
lnlonlublo specifications. Tlio deed to Harrington was for the
Mentions, not merely for the patents. This distinction is
dearly sot forth by Judge Woodruff, in Buggies v. Eddy, and
>y Chief Justice Taney, in Gayler v. Wilder above cited. It is
lot tlio more parchment which tlio discovorer may assign, hut
,lio inchoate right. And tlio commissioner of i>utonts erred
{I'eatly, ns tlio decisions show, when lie hold that tlio inventions
must he perfected to ho assignable. Kor is tlio date of an in¬
vention necessarily the time wlion it is perfected.
Morse did not file his caveat until 1837, and did not apply
for a patent until 1838, yet it was hold that in 183*2 tlio process
and means, tlio combination, powers, and machinery, were so far
developed and arranged in his own mind, and his investigations
on the subject were so unremitting since, as to dato his inven¬
tion in 1832, which gave him priority. jVoi-sc v. O'Jtcitlg (15
Howard, 109).
Edison states he had arranged in his mind the processes,
means, and combinations which are embodied in the application
for “99 some time in 1S72.” (I'lll's' folio 852-3.)
The dato of the invention is that of tlio discovery of
tlio principle involved, and tlio attempt to embody it in
sonio machine, not the date of the perfecting of the instru-
Colt v. Mass. Fire Arms Co. (1 Fisher, 108 and
120).
To same effect, Pnrkhnrst v. Kinsman (1 BhitchlV
<188-194); Cox v. Crigg (2 Fisher, 174-7); Conover v.
Roach (4 Fisher, 12).
If the law thus fixes tlio dato of an invention, ns against
others claiming priority as inventors, the same rule will apply
with greater force to a more subsequent assignee.
Inasmuch, however, ns the “ improvements” in the present
cases were not only invented, but perfected and ready for
patents before the deed to Prescott, there can ho no question
that Edison’s assignment of 1871, with its irrevocable power of
nttornev. vested tlio lewtl title to them in Ilarnnutoii and his
«t day), Tltoi
irrevocable, to sell amt assign ms rignts aim lino io uiu xnipiex
and Quad ruplex Invention* (Pills’ Exhibit “E,” page 24). On
January (i, 1875, Gould, as attorney for Edison, assigned all his
title to these inventions and improvements to Samuel M. Mills
(Pills’ Exhibit “ E”), and on January 11,1875, Mills assigned
them to the Atlantic and Pacific Telegraph Company, tlio
plaintiff* (Pills’ Exhibit “M”).
On January 23, 1875, ho formally notified both Prescott and
Orton in writing (Pills’ Exhibit “I” and 11 J”) thut tlio “claims
of George Harrington to ids Duplex and Quadruplex inventions,
under a prior contract and irrevocable power of attorney, oj
whirl, yon are aware, and which are still in full force and olleet,
will prevent a valid transfer of such title either to you or other
parties,”— Unit they invalidated the agreement ho had Hindu witli
Prescott, and ho offered to return to them all money expended
or paid on nocount of tlio negotiations with them.
On the same day Edison notified the Commissioner ot l. .ton s
by letter that lie laid made the arrangement will. Ircscott
, le cr t s l re -tl t 1 s co-parnorslnp with
Harrington; 'of October 1, 1870, and Ids assigunio.it to him
wilh irrevocable power of attorney of April 4, 1871, “arc still m
full force and effect," whereby the control of the inventions was
placed in tlio hands of Mr. llnrringto.i-tl.nt Harrington has
objected to any deviation from tlio said assignment n»d powci o
contract therein recited. (Pill's’ Exhibit “ G
Tt n.uv he contended that Edison’s power ot attornoj to Con h
liiirlcd With the title. There tane site t me p
1. Harrington on January 1,18m, omj tmeu }
i A. Edison appointed Jay Gould his attorney
id assign Ids rights and title to tlio Duplex
ilox mid Quadruplex inventions in tlioir Morso tipplicnt ion
‘which covers those in dispute), under the authority of the part-
ncrship and the deed of 1871.
The patents being ready for issue, it was natural that Gould
should desire from Edison such power to assign as would ratify
the titlo to liis third. Edison could not sell oven this third, but
lie could with groat propriety execute any conveyance which
would strengthen tho title of Harrington or Ins assignee.
A power of attorney was chosen as the proper form to trans-
for either bis titlo or his share in the proceeds.
2. Prescott bad violated his covenants by permit ting tho West¬
ern Union Company to nianufacture the Duplex and Quadra-
plox instruments without Edison’s consent, bimselt superintend¬
ing the placing them on their lines, which gave Edison the right
to rescind tho agreement, for which Prescott had given no con¬
sideration.
If tho inventions did not pass to Harrington, then Edison had
a right to sell awl assh/n than to Gould.
If Prescott was entitled to a half interest, then Edison lmd a
right to sell his half.
If the agreement was binding, and neither could sell without
tho written consent of the other, then Edison could sell his one-
half interest in the proceeds.
Tho power of attorney to Gould embraced Edison’s rights,
wlmtovor they were.
8. Tliero is still another view in which Edison's power of
attorney to Gould could ho operative. Edison seems to have
hold tho opinion that Harrington did not care for Quadruplux
Automatic, and that Quadruplex .Morse was of no uso to him.
It was contended that the deed of 1871 was not largo enough in
its grant to ineludo them.
In the 5th clause of the partnership contract it is provided
that for any or g 1 c t o mprouments made by Edison
other than those arising from the current work he should ho paid
a sum in addition to his share in tliu business. He had no power
(Pills’ folio 1087), and it does not weaken the plum tills title that
they gave valuable consideration for it, as against the claim o
tho defendants, who-whilo boasting to the world in the 1 me
article that they owned the Qundruplox, “which would sate u
tho cost of building of 18,000 miles of wire m one year, amt m
an instant would quadruple tho usefulness of the 17o,000 miles ot
wire owned by the Western Union Tele i il C . | } 1
good care not to pay tho inventor, and only hastened, six n.oii I s
biter, to accept his offer, when they found linn fuliillmg
solemn covenants.
DEFENDANTS’ CLAIMS.
1. Ourox’s I’Aitor. Amu mi ms.
It is difficult to separate the defendants. Tlioy vo'o Sinmoso
twins in their endeavors to get hold of Hdison’s n.yen ion
Having got them, they paid very little attention to H hum. H
facilities wore Wanted, Prescott used his influence with _0 o to
n-curo them— consideration one-half of tho patent . It ■ Ldison
to UM,B„ it, Orton kindly gave his consent >.at Pte ott
nTi.dit accent. What did it matter! As well pay two as one
but bind him up carefully by an agreement, Mr . - retwr », ^
above all, let tho Western Union lmvo control of tl o patents
tho money will ho an after consideration! It all this was not
SZd wls done. Privity between the two was perleet-
notico will affect both equally.
,v» i
<TJ£Z2» «- «. >»« irtc,
said 80—1 think lie did” (Pills' folio Dili).
liy the New York Statute of Erniids (N. Y. liev. Stats. Vol.
3, chap 7, part 2, title 2, See. 2, p. 142)—
“III tlio following eases every agreement shall lio void unless
sueli agreement or some note or memorandum thereof lio in
writing, and suliserilied by the party to be charged tberowitii.
“1. Every agreement that by its terms is not to lie performed
within one year from the making thereof.
See. 3. Every contract for the sulo of any goods, chattels, or
tilings in action tor the price of fifty dollars or more almll lie
void, unless:
1. A note or memorandum ol such contract ho made m
writing and bo subscribed by the parties to be charged thereby;
2. Unless the buyer shall nccopt and receive part of such
goods, or the evidences or somo of them, of such things in
action; or,
3. Unless the buyer shall ut the time pay some part of the
purchase-money.”
| Orton’s agreement with Edison was in relation to “Duplex,”
and, as itjs claimed, covered “ Quadruplex.” In fact lifts’ Ex-
liibit “0” was brought to Orton in February, 187ft, and the
drawing marked “Duplex 10” in this Exhibit contains in sub¬
stance case “ II.” or the Quadruplex. It was thus an existing
thing, the subject of a sale in prwscnti, nothing remaining ex¬
cept to test it ; no pretoneo oven to take it out of the statute of
i rands.
protects fully against a parol agreement lik
' ' “ . . ‘ action"— and some of the invention
may he so classed-as well as goods or existing things, it is, to
say the least, doubtful whether all these inventions in dispute
were not already made at that time within the meaning of the
latent Law and decisions. Edison’s twenty-two nights in the
n 1"ii oxl,u,’ilno,|ts on Quadruplex in his shop in
the tall 0118(3, and the nights in .Tune, 1874 on the Western
Ulr; t ^ ,o to i^t «.
. .. ‘ " *KS" t'KSKni) not iik I'Miadkii— Orton did not nt-
tui.pt to comply with his agreement to take the Duplexes. Edison
Union wires for twenty-two night*, between 2 and 7 A. M., hav¬
ing' to bring his own instruments (I’lfl's’ folios 933 — 1140-8), and
lie wroto to Alillci* on April, 1873, “ l’lease inform Mr. Orton that
I have accomplished all I agreed to with one exception, and am
now ready to exhibit and close the thing up" (Dofts’ Exhibit “ II”).
Getting no response, on April 23, 1873, before going to Europe,
ho appointed Miller his attorney to silt to the 'Western Union
Company eleven Duplex inventions, tho perfection of which ho
had already tested, and delivered tho models to Mima & Co, anil
Sorrell (Dofts’ Exhibit “12”). lio returned in two months, but
no word from Orton, and no sales by Miller (Pills’ folio 1108).
For thirteen months after this lio received no iaoihties from
Orton or his company ; so that tho Orton ngreoinent was vio¬
lated and at an cud.
Eoforo Orton wont to Europe, Edison asked him to lmvosomo
of his Duplex machines put on tho lino for use, lint did not suc¬
ceed until ho made tho agreement with Prescott to give him
half tho patents (Pills’ folio 1170) a year later.
On May 19, 1874, needing tho use of telegraph wires to test
his inventions, ho wroto Prescott: “Orton’s sudden disappear-
unco took the bottom out of my bout,” and proposed to take out
tho patents in their joint names, and then present them to tho
company for purchase, (not simply to agreo on a price), only asking
facilities and help to tost them. (Dofts’ Exhibit “ 14.”)
It is thus, the riioi’OsiTtox came fbom Edison, but iie was
1J" Oido..TOudmits tl.at between April 23, 1873, tho date of tho
powor-of-attornoy to Miller, and May 19, 1874, when Edison
wroto bogging for facilities, bo saw no scrap of writing signed
or written by Edison (Dofts’ folio 890), and corroborates Edison
in the statement that from April, 1873, until June, 1874 the
latter had nothing to do with their wires. (Dolts iolio 008-
01}! J'JVm ^ 5 act. Orton, as stated, learned that
Quadruplex (experimented in Edison's owi.sl op) 1 «Hjoo * £
nrknbly successful i
mc-hulf for the very facilities he had
nromisod him in Eebrnary, 1873, and had forgotten to give.
Tlmre was no time to be lost-Mc Quadruplex was already per -
92S), and on the very next tiny the Times urliclo announced that
tliis iiivalt]i>i>1o invention — the now system— “will ho speedily
l>ut in practice by the Western Union Company, liy whom tiii:
1’ATHST IS COXTHOM.ItB.”
That was a capital won!. « Owned” would have involved
some liability ; and even at the risk of forfeiting the “ |inrchnso”
of February, 1873, “controlled” was hotter. Their electrician
had got onodialf for nothing, and would givo them tlio right to
use— as ho did — ' “speedily and continuously, and that also for
nothing in hand.
Alas, for Edison! From April, 1873, lie had endeavored in
vain to lmvo Orton purchase. Miller tried it for him, and
failed. Despite all the money paid him by the Harrington as¬
sociates, his railroad in Michigan had caused him a liuancinl
pressure (Dolts’ folio 103). Knilronds nearer homo might have
done so! Murray had endeavored in vain to got Harrington’s
permission for him to sell the Quadruple*. The Unger mort¬
gage for $10,000 on his shop must ho paid. Once more ho ap¬
pealed to Orion —only the day before tho Prescott assignment —
only two days before Orion’s brilliant auuouneement of tho
Quadruplex. lie ollered to hypothecate, first his shop, and then
his rights under tho Harrington deed. In tho language of Or¬
ton’s counsel, on looking at tho paper, with its irrevocable
powor-of-attornoy, “no yootl ” (Pills’ folio rebuttal, 270)— Mr.
Orton was obdurate.
t enmo the Wines article. Surely they will pay now— and
Edison re-houud himself to Prescott on August 19, 187-1.
Months wore away, and finally Orton, who was all tho time
using the Quadruplex, being closely urged, paid him $0000 on
December 10, 187-1, taking a receipt prepared by his Vice-
President, on account, “ provided (he terms of payment shall be
suttsfucloi ily adjusted.’’ Not a word about arbitration in tho
receipt, nor in the conversation detailed by Orton. (Dells’ folio
fi-18.)
In fact, there was
February, 1873, hat
pretence that the ^verbal arrangement of
)’ existing force. On tho contrary, Mr.
In tho argument holoro tho secretary ot the Interior, no right
was set up in behalf of tho Western Union Company.
On December 13, 1874, Edison and Prescott nindo a written
offer of sale to tho company, stating their terms, for tho
Quadruplex (Dolls’ Exhibit “ 27”), and Orton rejected it. (Pills’
folios 1017-1180.)
Another memorandum ot ollor. unsigned, was made by Edi¬
son nlono; hut no reply could ho got from Orton. Edison sat.
in his ollico-ono day in December, 1874, two hours, waiting for
some action, when at last Orton made tho consoling remark that
“ there was a good deal of money in railroad signals,” and,
without notice to Edison, loft tho next day for Chicago. (Pills’
folio 1203 j liebutlal, 273-7.)
It was not until January 10, 1875, wlion, on his return, ho
learned that Edison had assigned to Gould, and was ready to
return his $5000, that Orton attempted to accept tho unsigned
oiler (Dells’ Exhibit “28”); meantime, on January 10, 1875,
being possessed of tho after-thought of paying $5000 to Prescott.
(Dells’ Exhibit “B.")
1. Dy tho terms of tho receipts the payments wero only to ho
on account of an agreement for an assignment to be made if tho
parties should ngreo upon terms of sale. N^terms were agreed
2. Tho return of tho $5000 lias boon tendered, (lllls Ex-
Dibit “I.”) „ , i i
3. Mr. Orton could not cronto a contract of purchase and sale
by accepting the offer contained in n\dm_j — l It I t -
memorandum, after the sale to another. .
4. Ho had notice of tho prior equities and title ot Harrington,
as will ho seen sufficient to render his agreement, verbal or
w/tz tit, V
✓<5 j
1 ^ written, invalid.
- Ctiti (jrCKi u-v£ ■fct. c."> c~-
I MV#*. J&fctl - J&pt
U fid. W«V-/ Uu t
THK I'BIBCO I’T ACUKU.MKXT.
- ’-^s . . «—
ir„ ...... ')■< ’ Iivu 1 Jidimt s luvrssiliri
Ho was willing to call I’rcsenlt a mint '
"'■"oli Hint Ca'.sai- ainon.r electrician
"util Set-roll told him ft wool, l buck oven oneo
iolios 818-1812). Hu was willimr 't ° ‘ '° ,la,u"ta O’efV
lieccmUer 10, 1871 (!«,. *' . .
sr <•«. <
iollo 1300), ami were a Ini I f c ^ M<' co"^««y (Delta*
l-J- the use of two scl o U"'C* ",01'° »l«i.l
. . . Cirri'1;-'1,'"
over since (fill!,’ folios SeoloO'l) „T ,■? !jW Co,"|l,uy
/«• him a purchaser Tf I, . P' ,Ud JrcseoU M""‘
lection— and none such ° '1'° 0l101'18 in di-
Kothing but the deed of i‘°
2, —Panics poLession ‘'°m lll0°a8U
The ^'kI’atknt Laws,
flitioual and sith modo ]S*hiWt “P”) i3 con-
^wlns^«Hd^m wii2Tr, i8 '!"1,loon "10 fo1-
faemidmttioH" neither party s L luJ'S ",a<'U '“"P of
" 180 ,ll8l'ose of tho invention ’ slgl1’ °*' “Ibor-
hoiis, or any improve,,.- _ or llso the inven¬
t'd of the oiher-’-no, !'00,> wUlmtlhe writtm con-
"•liieli “ both parties s/a. ^,8"’ oxa'l't at a price to
A'ot only is such .. . . C wn,inU"
Pat utterly ««iw% of llw!!!,11'* tll01'0,iuT ol'tho law,
as an assignment. ^
. Tho Constitution gavo Congress tlio right to socuro to
“ inventors ” tho exclusive right to tlioir discoveries.
It was not until tho Act of 1837, See. G, that patents
could ho issued to assignees.
Alasou in 1845 (4 Opinions, 400) hold that a patent
could not issuo jointly to, tho invouloraml tho assignee
of a partial interest.
In 1850, Attorney-General Black (Vol. 9 Opinions, 403)
decided that wlioro tho invontor make a fall anil complete,
assignment ot his right, the patent might issuo to an as¬
signee. If only partial, though the part oxcoptcd bo
small, it njtist bo issued to the invontor. ,
Under See. 4895, Koviscd Statutes, patents may bo
granted to tho assignoo of tho invontor or discovoror — tho
assignment being first duly recorded, and uiulor See. 4898,
Itov. Stats., an “ exclusive right” in a patent is assignable.
Under See. 11, Act 'of 1830 (tho effect of which is em¬
bodied in See. ,4898, Bov. Stats.), Judge, Story hold that
the law provides for tho recording of' thrco kinds of as¬
signments, anil no others.
1st. An assignment of tho wholo interest.
2d. An assignment of nny undivided part thereof.
3d. A grant or conveyance of tho exclusive rigid within
any spociliud portion of tho U. S.
Brooks v. Bgam (2 Story, 525).
In Troy Tron anil Nail Man/. Co. v. Corning (14 How¬
ard, 210) Justieo AVayno said : A moro grant of liconso
to a party without having his assigns, or words equivalent
to them, showing that it was meant to bo assignable, is
only tho grant of a personal power to tho liconsoo, and
is not transferable by him to another.
Any gi n out w 1 eh does not convey to tho assignee
tho entiro and ukquamnbd monopoly, or an undivided
intorostm it, is a mere license, and will not ciiablo tho as-
signeo fdjfefr-in his own name.
Gayter v. Wittier (10 Howard, 477); Sun-
ford v. Messer (5 Fisher, 411).
Tho test to bo applied is, whether tho instrument vests
in Hip irrantoo tho exclusive right for tho wholo country,
or a particular district, of making and using (lie tiling
patented, and of granting that right to others.
Curtis on Patents, Sees. 1 90, 197.
Nmv in the l’reseott agreement not only is there no grant to
Ids “assigns,” hut ho is expressly forbidden to assign unless
upon a consent in writing.
Some new paper is needed to make an assignment. It
has not oven the dignity of a tiernse, and certainly was
not entitled to be recorded, or huvo the effect of notico
from that fact. Eo suit could bo brought under it bv
l’roscott.
Tho Commissioner cannot legally issue patents under
it for tho reason stntod, and tho additional one that K.li-
son has notified him not to do so, revoking bis request
that tho patents should issuo to himself and Prescott and
asking in duo form that they shall issuo to himself and
Jlnmngton.
I There is no authority to issuo a patent to an assignee
m without the request of tho inventor. Tho law forbids it,
■ and the rules of tho Patent Office are equally explicit.
■ dins wrong has been threatened; the patents have
In ^" ordered to issue to Prescott with Edison, and this
'■ Court ol Equity is asked to prevent tho consummation of
■ le % continuing the injunction which prevents
■ the defendants from receiving tho patents, and by rescind-
W lnS ‘ho pnpors under wl.iel. they pretend to claim title,
plaintilir1"12 U C°"VOyil"(;0 ol‘ tl,oil alleged rights to
.. 1^-?” ~ w,,>' ll“ ■l”M b» *"» ■'“>
Tho Commissioner ims no newer to .t .i ■
11.0 tow <ml cmllllom wlii.-l, Com. of ,]l0 co.i'sl.C.lioH
A Court of wll l’ ’ "i
»"d give tho opportunity for so flagrant an injlLice-corLdnly
will „ot aid it by a decree. Wore this done, tho rights not
alone of plaintiffs but of strangers might be seriously affected.
3. Pukscott’s violation 0
1IIS AUllliEMKXT KXTITI.IIS l’LAINTIUFS
_ VE IT UKSOIXUED.
It was a hard bargain which Hr. Prescott drove. There might
well be cases where on on so great a benefit could om.ro with
very little consideration. This is not one ot them,
non made the proposition, but not until broken promises and
SSSBESS
forced to part with one-half for nothing? Prescott was tho com-
ties Was the new promise any consideration at all ? lhe laiv
i ni.iR i,im to bo in privity with Orton, ns tl.o facts do.
There may bo Biich an unconscionablcncas or inadequacy
i„ ‘ gdn'as to demonstrate ,.o impo Ulon, or »*-
undue influence, and in such eases equity ought to in-
t0d'el'0' story’s Eg. Jar. See. 240. .
A eont.net which is ....certain and the eo..s.derat.o.. of
which is grossly inadequate will bo doelared void in oqi.it} ,
hilt the plaintiff will bo decreed to pay tl.o money act -
ita. r,. «. M1.
in actual use on our 1. ms t tt 800„ ,lto the
„s wo could; wo began in the su.n.ne. ^ tlint work
oxporiinonts woro reported in stN0B'> « Mr. Prescott di-
C^UmwoL'doncmai.^ Qm'.druplex machines during the
fall of 1874.” 9) »! ordered all tho Quadra-
and extending it tor thorn.
f
/
Tli'oy now have it working on forty-eight circuits (Hefts folio
1338), which would give a royalty of $12,000 a year, in addition
o $25,000 cash, according to the oiler which Orton accepted—
ivlieu it was too late.
While this whb going on in the daytime, they kept Edison
busy tit night, giving him facilities, to led what was already in
working order and had been for months.
Head his report to Prescott, Sept. 80, 187-1: “Started to
operate Duplex about ten P. Jl/.— for an hour’s trial at 12.08.”
(Dolls’ Exhibit “ 18.”) A few dnys later ho writes “ found a
bad connection last night.” (Dolls’ Exhibit “ 20.”)
Edison says three sets of Qmulruplox instruments, used “ for
experiment and proof,” woro allowed to remain !o, use, and two
sets, which, without any special permission, woro worked by
them to Boston, etc. j hut he novor consented beyond this to
their use or manufaeturo by the company. (Pills’ folios 855-0,
001 to 001.) Ho was induced in tho constant liopo of purchaso
by the company to consent that three sots should bo ordered,
and himself to agree to make twonty. (Pills’ folio 1002 ; Polls’
Exit. “ 21 "-“28*") But, finding how matters stood, and seeing
no prospect of a sale to Orton, who alntnlg hail alt he wanted,
Edison concluded to fulfil his covenants with Harrington, re¬
scinded tho agreements, and did not mnko or consent; to tho
making of any instruments for tho company. (Dlls’ folio 1000 ;
Pills’ Exhibits “ I” and “ J.”)
Plaintilfs meantime have retrained from making or using tho
inventions, confident that n court of equity will do them justice.
This maiiuliieturo and use of tho Ouadruplox by permission
and under the direction of Prescott, has gone on constantly
both before and since tho rescission. It is in violation of the
conditions in tho agreement, and that alone would have justified
Edison in treating it as a nullity. It was at best but a partner¬
ship agreement to cllect a sale, and it does not become tho de¬
fendants to claim that tho Harrington partnership of 1870, with
its large consideration and covenants faithfully performed, shall
fall, and this one stand, which had no consideration and has
been grossly violated.
Tun Notice to Defendants.
Consthuctive Notice.
The record of tho Harrington assignment is constructive
notice suiliciont to have put a careful man on inquiry.
The authority to record it will hardly bo questioned. It is not
mei-oly an assignment of inventions to bo made, b« =
Actual Notice.
equities before their protended title was. aequm. ,
have put them on ‘“'t"’’^ Q , v tll0 title stood.
Barney corroborates Keith hi his mom j,
not materially vary from it. about tc
Certainly Orton, in f' f [‘teS’ to buy the Auto
capture tho Q 1 \ b jj, d by letter su
matie system, which lie ' nd de very largo bump o
inferior, slow, and useless. It » t
credulity which will accept that thooiy . ^
Equally difficult is Z, with its singl
at Kelli’s rojusal to sell tlm t J ,i() threatened, n
Edison’s inventions uro controlled in the interests of Harrington
nml his associates anil .Mr. Edison ; ami tlmt Orton said tlio only
tilings lie valued in conneutinn with tho whole matter were Mr.
Edison's inventions, and asked what would indneo mo to have
Mr. Harrington and myself secure to a satisfactory party “till of
Ellison’s inventions." (I’lfl's’ folios 1489 to 1-1012.)
Barney says (Pills’ rebuttal, folio 200) “ Mr. Orton was nego¬
tiating for nil that Mr. Harrington had us well us Automatic."
Orton only remembers tlio request as referring to Edison's
Automatic patents, but ho corroborates Keilf (Hefts’ folio (HIM),
that tho latter explained the ownership of tlio Craig and Little
patents, and said “ then there is the Ellison group of patents" held
by Harrington and not owned by the Automatic Company.
Again ho corroborates Beit!' (Hefts’ folio 044-5), that ho,
Orton, said ho did not want tho National Telegraph lino or the
Little patents, hat “nivn .tin a l'tticu rou Tim Edison patknts
ai.oni:.” (Hefts’ folio 045.)
Ho learned tlmt Harrington controlled those. Ho know that
Udison was working for tho Automatic people, making ap/nt-
■alas of his inventions for their use, but don’t think ho knew
ireeisuly their relations. (Hefts’ folio 840.) And adds: —
“/ don’t remember that I knew there was a written contract, nor
vlmt tho relations between Harrington and his people and
ICdison were, kxokit in so far as Mr. ■Wc///' communicated them
o mo at that interview with mo in June!”
II such notice, two months before tho Prescott ngroomont,
vhilo tho negotiations for Qtmdruplex wore ponding, with tho
irivity and consent of Orton, was not snllioicnt to put them on
nquiry, it must bo becauso they had seen copies of tho llar-
ington eontraets already.
2. On July 8, 1874, Kdison, wishing to borrow money, brought,
>y Orton s request, his title-papers for his Automatic interests,
ho deed of 1871 ; and Prescott next day went with him to Mr.
hone, counsel for defendants, who, evidently impressed with
id ison’s irrevocable powor-of-attornoy to Harrington, said there
™s nothing to hypothecate— “ no good.” (Pills’ Kebuttal, folio
170)— notico to both defendants sullieicnt to put them on
nquiry.
8. On August 19, 1874, boforo Kdison and Prescott simied
who bad also acted in tlmt capacity lor Harrington, sum to
Prescott: “Ttinan is a contract iiutwuun Edison and Hau-
IlINUTON ON Itncollllj HAS THAT ANY HUAUIXU ON THIS CASK?”
Prescott answered, that the contrail related to Automatic tele¬
graphs, and had nothing to do with this matter.” (Hefts’ folios
294-5.) Edison made about tlio sntno reply. (Hefts’ folio 888.)
This was a remarkable notice, under tlio circumstances, and
was addressed to Prescott to warn him of tlio stop bo was taking.
At least it should liavo resulted in a request to know Sorroll’s
opinion why this contract on record ought to prevent tlio
consummation ot tho agreement. It was nioio than a moio
rolbroiico to a contract, and intimated very clearly, lor a mail in
Mr. Sorrell’s delicate relations to tho parties, that bo thought
Prescott was treading on dangerous ground. AVliut did that
matter to Prescott ’ He was not to pay anything, and could not be
injured.
To break tho stunning force of this testimony, Prescott, who
lind no rcmcmbrunco of tho fact, snys that in January, 1875, ho
did make such a reply to Sorrell, and ho lins an indistinct, dim
recollection that Sorrell then showed him a copy of the Agree-
incut, and said Harrington made claim under U to tho Duplex-
inventions in controversy. (Hefts’ folio 1320-lu78.)
Unfortunately for Prescott’s “alibi” of Mr. Sorrell s notice,
the latter had already sworn to interviews on tho subject in
1875, ns well ns 1874. Ho said, “ that is tho only occasion that
I remember that that contract was referred to before January
1875.” “During or after January, 1875, 1 frequently had con¬
versations with Prescott on tlio subject but on August 19,
1874 “ was tlio only occasion when tlio two (Prescott and Edi¬
son) woro togothor.” (Holts’ folios 308, 839-418.) _
4. On October 18, 1874, a bill tiled by Craig, containing a ful
rolbroiico to tlio Harrington deed of April 4, 1871, huving
tho words “applicable to automatic telegraphy, o, me k
printers”—1 with a notice claiming all Edison s lmcntio
decide telegraphy, except for tl.o Gold and
■under this and other deeds— was served 1 ^
Union Telegraph Company (Pills lcbuttai, foho - >
Exhibit "’AT’). The service was not proper* pio 1, the
making apparatus of Ins monition for thorn j itml the oflicors of
tho Western Union C»ni]nmy wore taken by one of the Harring¬
ton associates, (luring the partnership, with show of authority,
to the shop where the work was going on, and Edison then and
there i eorkul the Qumlriiplex lor them. Certainly there was
enough possession to have put (he defendants on inquiry. Be¬
sides, notice that Harrington owned Edison’s group of inyen.
lions is acknowledged by Orton, and knowledge ot tho Ilarring-
ton-Edison contract on record is brought home to Prescott.
Whore a purchaser has knowledge of any fact sufficient
to put him on itu/mri/ as to tho existence of a conflicting
right, ho is presumed to huvo made the inquiry and ascer¬
tained tlie extent of such prior right, or to have been
guilty of negligence equally fatal to his claim to be con¬
sidered a bona fide purchaser.
Williamson v. Drown, 1» N. 1 . cod.
In England tho rule is, in order to protect a purchaser
tho transaction must he complete in both purls before
notice, that is, the vendee must actually have recetved Ins
deed and paid his money. If ho has done only one of
these, his rights will be inferior to tho right ot the holder
of the prior equity, lie must to be protected hold the
loyal title, and have p aid the full amount ot the purchase-
money.
JJisphtim’s Entity, See. 200.
In the United States also tho rule is the tnnte, where
no equity, roll tin has i.ost nothing.
Disph, mi’s tipdtU, Sec. 207. „3
Notice before the purchase., nonn/ was u d ''\ b
effectually as tt he had received tt before the pmcha^
. . \iee v. McDonald ( 1 Maryland 11. 414).
alleged equitable claim— tor no tuais ,n ullsu ,v sale
and the §5000 was only to be in an 11^^ Edison and
should be agreed to— and was tot joi. • 0f course
Prescott. This sum was tendered back, and its
The legal tills, imist
piirelinso-monoy paid
(lit ions obtained.
have boon conveyed to defendants, and I
by thorn before notice , neither of which a
DbFSSDASTS 11AVU NO KQUITY, Foil Til BY IIAYK LOST NOTIIINO.
Tlie Courts of the land cannot guard too zealously the rig I
inventors 1 heir genius adds largely to the prosperity a
ioiiilor's of the people. But there is another claL seireely I,
iieritorions-the men without whose appreciation mid inn
m aid ninny of the most remarkable inventions would i
.f",1.;’? 111 To George Jlnrrington and his as:
,1S,nuu,ll>' <h,° "»>t telegraphic facilities have been lx
oiod and cheapened to the public. They appreciated the gc.ii
tliomns A. J..d's°" „„d employed it, and with great liherali
VlV0 .lnni tllu '''films which enabled him to produce t
mentions in controversy.
<lf 3>l"ity »]iotil(l protect them and their assigne
Smnst the attempt to deprive them of their rights.
LKOXAKD iMYKUS.
THE ATLANTIC AND PACIFIC TELE¬
GRAPH COMPANY,
against
GEORGE B. PRESCOTT, THE WESTERN
UNION TELEGRAPH COMPANY, AND
OTHERS.
Mwam irait FXjjjaswmm
$L Stopiot (fcontt
'I’m: Atlantic and Pacific Tei.k-
mtAPii Company
Gkoiiiii: I!. I’kKscutt, Tiik Wimtkiin
Union Tki.kokapii Company, and
iVlUiUilKNT
Of K. W. Ituttacll for riainlill*.
ABSTRACT UK THE PLEADINGS.
Ji’ol. 3. Sliov
tides of uopiirtnursliil', Uiiteil 1
. . 13‘ I" Mhjr, 1874, Edison solicited IV
join Inin mi his experiments, nnd oirorc.l to shun
with Prescott, the profits to lie derived from tho in
Fol. 21. ITmriiiglon had notice of tho said
I etwee E I o , and tho Western Union, and novo
.Taiinnry 23, IS" q l0 tiono I I lison’s right to mi
eon tract.
Fo/ 1 23 Edison admitted that the inventions I
to tho Western Union.
Fo/.2i. Nothing was loll to lie done, “ excel)
eerluining of the precise ainoniit to he paid for the
it was agreed that this should he ascertained oi
nt'ce i out f tho parties, or if that, failed, 1, y arl.itr
And, on December 10, 1874, Edison received
"0<!0"nt- '» anticipation of tlio fixing of the
price. And Prescott, on 10 January, 1875 roeoi
same amount. ' ’
the fed20f 4 Aprlrmi“ cover any h,2nS“I’ilf
rr qnadrnplox telegraphy.
"larch, 18 1 n„ t s a le hotwoon Edis
Orton, president of the Western Union, that Edison
make the inventions in question lor tho Western
and should ho allowed to use the wires of that comp
experiments.
Fat-. 17. “And that for all such inventions, in
meats and letters patent, liu should receive such pr
diouhl hojnst, amhllio amounts thereof should be
ained in due time, either by agreement of tlie part
f that failed, by arbitration.”
Fol. 111. Tho Western Union accordingly tin
anilities to Edison for the trial ol his experimoi
hme, 1874, Edison suggested to Orton that Prescott
leeoine joint owner with him (Edison) in the invent
Fol. SO. The agreement of 1PM A mjiinl, 187
undo accordingly by Edison ami Prescott of their m
ion, and independently of the Western Union.
Fol. 21. In June. 1874, Edison and Prescott i
vitli tho Western Union that they would perform E(
greement with that company.
Fol. 22. “ In the conrsu of said experiments by E
ml afterwards by him jointly with Prescott, eortain
de inventions in and improvements of tho duplex s;
ml in the discovery of other modes of multiple Ira
ion, nnd particularly of thu so-called qnadrnplox were
iy tho said Edison, and among them tho invention
inprovements described in tho applications Nos.
Fol. 23. In September nnd Octobor, 1874, tho W
J’ol, 28. lfi December, I.S71. A proposition ii'i
mg, fixing tlio |>fiuo, was made by Edison mi, I Prese
Hie Western Union. Erhibit //.
30 December, 1 87-1. Anntliui' proposition was
Exhibit. ]).
Fol. 2!). . Orton lining compelled to leave New Vo
il December, 1 874, rcpio-tcd them to wait I’m a do
m tlio oiler of 30 December, 1871.
I I'"! “Ilvr mnaittcij open until I!) .lannarv. |S*f
m that «lav the Western Union „ecepte.l the second „
"•"positions named in Hie writing of 30 December,
J-ol. 3-1. Edison eutieealed himself, so that no lei
f any kind ennld he made to him.
"glo. ii, dated 1 January, 1S75, he (Oonld) hadTill “o’
ee ol tiie rights of the Western Union.
That deed was not oxeentod on the day of its date.
if Wy'!f w'C Atlantia and Pacific lind notice of tho
guts ot tl lie ’Western Union hofore the delivery to it of
10 "sn milt f Ronll lilted July 10, 1875.
1. The /‘in/nenhij) Deed.
eveem .?* \ 0u' °i'' ""h <«<>, Edison and liarringt,
, executed ami delivered a partnership deed, l,y which Ed
: so" e,,vel"l',t“l1 l'1»t I'" would devote Ids talents as an i,
ventor to the invention of improvements in telegraphy, Ac
""'I tlm such inventions should belong to the parti,
"mT"i 10 llUVU "'"I Kdisoii on,
l lM “ ""i-'nhls, hut that Edison should not admit, «„
one to hold any interest with him in the inventions U„i
rmgton was to he allowed to bring in his associates I
not so as to diminish Edison's one-third (fol \
The partnership deed also provided for a- partnership i,
“ taelnre ot tel || aehinery. But that sow
tXm.h-V' «li» antomati,
telegraph system was not hroitght into „0„eral use as i,
was expected it would he (fol, ). " ‘
The partnership in inventions eontinued, and II,
ton expended very large sums of money in and about Ed!-
sons inventions in electric telegraphy, and in efforts to
develop them into practical use. Harrington’s outlays for
hese purposes wore continuous during the whole period of
tiie partnership term (fol. ).
2. The Deed of I A 1871.
volutions together, in connection with Edison's inven-
> in electric telegraphy (fol. ).
)rton and I'rescott hail constructive notice of the series
itcnts issued to Harrington and Edison jointly.
'rescot t lmd legal notice through Ids partner Edison, of
rington’s title. (See nrguuiont, pages .)
Vegoliution for Stile hi/ Prescott amt Mtlmm to the
Western Union.
In 10 December, 1871, Edison received from the W.
15,000 on account of the proposed or intended sale ol
inventions; and Prescott, on January, 1875, re¬
ed $5,000 on tlie like account.
•Miaou and Prescott, hy letter without date, signed by
t and addressed to Mr." Orton, otlered to take for these
uts one-twentieth of the average cost of maintenance
0,000 miles of wire for seven years (fol. ).
l'liis was rejected (fol. ).
Afterwards Edison ami Prescott, on HO December,
1, made another proposition in writing, neither dated
signed, thus :
‘2d. Wu will take $25,000 down for all patents, and a
dty of $238 per year for each circuit created” (fol. ).
lly letter dated tho 10 January, 1875, Orton informed
ton and Prescott that the Western Union would accept
, proposition (fol. ).
And the Western Union now contends that the above
itionod otter and acceptance constitute a binding eon-
it as against Edison, and also as against Harrington s
;. (See argument, pages .)
On 23 January, 1875, Edison notified the W. U., as
itioned below.
8. Sale by Edison of his Interest to Jay Gould.
By power of attorney dated the 4 January, 1875,
right or title he (Edison) had to tho iuveutioi
or to the proceeds thereof (fol. ).
Accordingly, by deed dated tho (i J;
Gould sold and assigned such title to Mills, w
assigned tho same to tho plaintiff (fol. ).
3. Edison's Eenocation of the Ayreemenl oj
1874.
On the 23 January, 1875, Edison add res.
the Commissioner of Patents, informing him
son, was advised that hu had no legal righ
assignment of 19 August, 1874, that the in<
embraced in tho contracts with Harrington
tober, 1870, and 4 April, 1871, and aecori
voked his application for the issue of pate
ami Prescott (fol. ).
By letters of tho same date, Edison not
and tho Westcrir Union to tho sumo effect, ••
return all moneys which had been paid by tin
10. Decision of the Commissioner of ,
March 2UM, 1875. 1 he Commissioner ol
Timelier) decided that tho legal title to tho it
in Edison and Prescott, and that lie could tnki
equitable titles (fol. ).
11. Edison's lielcase of the Western i
14 th December, 1875. By this deed Ed
tho Western Union from all his claims agaii
pauy, nnd assigns to it all his existing inton
tlio said inventions. And by this deed Edison
Prescott may assign his interest to the Wester
Tho consideration is the rolenso by tho Wi
mu partnersnip f.lio in volitions ns and when tl
inailo.
That it duos not in terms omhraoo tile in
question, anil that tliu partnership created by
salved by inntnnl consent in 1871.
*• That the deed of I April, 1871, shonl
without. Ilie word “nr” in the granting part ;
ease there are tie words of assignment npplicnhl
Haitians now in ipiestian.
.r>. That a legal assignee of any property has
eonrts af law anil equity over the holder of a pi
hie right or title when snoli legal assignee is i
pure has or without naliee. That Prescott is snel
pnreliaser.
(1. That the so-ealled assignment of 10 Attj
was properly reeorded, and that Prescott, having
of Harrington's prior title, is protected by the pr
.the Patent Aet in respeet to the recording of in
of patent rights.
’ 7. flint in February, 1 873, Edison contracted
1 improvements on Stearns’ duplex, for the Westo
j for a price to be agreed upon. That such agrei
! binding on Kdison, and must prevail over any
j may lmve been hold by Harrington, because ho I
j at the contract between Edison and the Wcsto
) and that, under the circumstances, there is an
I, it would bo unnecessary to consider whether the
jrn Union’s claims of title as purchaser from Edison
lit Edison and Prescott aro well founded. ;j
, on the other hand, the title of Prescott fails, the ’t
d titlo by purchase Irotu him and Edison must fail 9
|
ie only object therefore in endeavoring to sustain the 9
neiitioued title is to show that I lie past and present -j
' the inventions by the Western Union is attributable ;
' a license from Prescott, hut that suuh use is founded if
e claim of title of the Western Union as purchaser f
Edison and Prescott. I
ns is to repel the proposition that one of the eondi- j
of the assignment to Prescott was that he should j
no licenses without the consent of Edison, and that
addition having beun broken, the title of Prescott
ipon became, i’/m fudu, divested, so that if Edison
the title notwithstanding the deeds of 1 October,
and I April, 1871, his ussig . cut to Mills passed
ill answers to the above proposition are presented in
riel'.
>' way of preliminary remark, it may now he observed
ready made is assigned before patent issued the le¬
gal title is vested in the assignee on the issue of the
"We concur in that proposition. It disposes of
ll L 1 1 tli made on behalf of the defend¬
ants that a legal title is held under the deed of 1!)
August, 187-1, as against a nieru eipdtalde title lietd
by the plaiutiir.
The fact is that the contest is at present between
conflicting e.pdtahle titles. When the patents shall
have been granted they will enure, according to
(.■mylar v. Wilder, to vest the legal title in the iirst
assignee of the invention.
(ua) That the deed of I Oct. 1870, does clearly embrace
the inventions in question, and that the partnership
in inventions created by that deed, remained in force
during the whole period for which the partnership
was formed.
(//) The deed of -I April, 1871, contains an actual assign¬
ment of all inventions thereafter to be made which
could bo added to the automatic system so as to im¬
prove it.
That equitable assignment vested the legni title in
SUMMABV OF POINTS.
ic-giii nssig . cm 10 ii uiniu jiae puremiser witnoiil
notice. Preaunt t cnulil take mi heller title under il
t Inin Edison hail himself.
{</) The proposition No. II, mi/na . vgnrd In I he re-
entiling nf the ilueil Ml Atii'iml, I S7-I , is wholly uu-
tenable.
(c) The projected improvement. mi Stearns' duplex were
nniinporlanl. As sunn as the invention ■>! the
quadrtiplex appeared, objection was made hv Har¬
rington and his associates In any sale thereof to the
Western Union.
The alleged agreement with Edison being indefinite, is
no legal importance as against the prior title of liar.
'Stott.
There is no equitable estoppel ■/« /mis.
The Title u utter Patent 27 April, 1875.
AJ? 1 H'lrrhiglon and Edison obtained tho patent of 21
T11’ lb7"> “ u,""'od (or tlle toneUt of the title of tho as
t m»'0tVl'"/Cri - ,e <i?e<l 0l’ 1 187s- ‘o fie extent ol
tunl Edison)'^ l0"'0V01'’ t0 tlle e'Iuitil!S o'' Harrington
Bo additional assignment from Harrington to Gould
was necessary after the issue of that patent.
ihe invention described in ml is different in many re¬
spects Iren, the invention embraced in that patent. As re-
gards those dillerenoes, a patent for DO would operato ns a
patent lor improvements on the patent of ‘27 April, 1875
Ihe plaiutill claims these inventions described in 91) ns
gcnci.il assignee ol Harrington ; the defendant claims them
as pin e nisei horn Edison and Prescott, holding title under
the deed ol 19 August, 187-1.
The plaintiff claims that the last-named deed does not
embrace any inventions covered by previous applications
tor patents. '
It is true, as suggested by tho court, that the defendant
is not to be enjoined at the plaintiff’s instance from using
this invention as its property, if the plaintiff has no title,
although tho laet may bo that it belongs to some one other
than the defendant (Col. 71 1).
The Title under the Transfer from Gould to the Atlantic
and 1‘itcijic.
Harrington's conveyance to Gotilil, 1 •limitary, 187.r),
eoii|i]eil will) Edison's conveyance to Mills, a ml tin; con¬
veyance trout tin; latter to the Atlantic ami Pacific Co.,
are sufficient to vest the title nailer the deed of 1 October,
1870, in the plniulifl as against the defendants in this
Tin; title under tin; deed of 4 April, 1871, also passed
by the deed of 1 January, 187a, executed by Harrington
on his own behalf and us attorney for Edison.
The Title under the l‘artnerehip Deed.
(Sec Argument, pp. ).
1. Tlie deed embraces all inventions in electro tele¬
graphy to lie made by Edison, and specially provides for
inch “original inventions ” as may not tie “suggested or
arise from the current work in the manufactory ” (fol. 387,
Omnibus Hill); and also provides that the experiments
need not be made at the shop sot up by the partners (fol.
2. This partnership was not dissolved by the discon¬
tinuance of tlie manufacturing business.
Tlie partnership in inventions continued, and very large
sums of money were invested therein by Harrington after
tlie discontinuance of tlie manufacture of telegraph instm-
»«»*<* ( I el | iel failed for want of custom) ; and
tlie patents issued for Edison’s inventions were issued to
, T in, roi i. mat deed dealt with only a part of tl
subject matter of tlie partnership deed.
(Seo Argument, pp.
The Legal Title.
Harrington’s equitable title under tlie deeds of
October, 1870, and 4 April, 1871, became an inchoate leg.
title ns soon ns tlio inventions were niudo.
, Hui opinion of tlio Commissioner of Entente on tin
point is erroneous.
It is of no legal authority.
(See Argument, pp. ),
The Title under the Deed of 4 April, 1871.
(Seo Argument, pp. ),
1. The recital recites a contract on tlie part of Edison
to assign all his further invention* which, on being added
to any automatic system or fast system of telegraphy,
would successfully and economically develop tlio same into
practical use.
2. Tlio quad implex system of telegraphs invented by
EdiBon since 4 April, 1871, is a fast system of telegraphy.
3. Tlio invention described in specification 99 would,
on being added to the automatic, economically and success¬
fully develop tlio same into nrnotiunl nsn and is
chauicnl printer (fol. 1210), I hero wns nothing' tele-
graphic about ICdison’s “ mcclmiiicnl nr copying printers "
referred to lit this deed (Hibson's Testimony, fid. 1212).
5. The invention described in specification 00 is “ ap¬
plicable” to automatic telegraphy, and can he so applied
advantageously.
0. The question is not whether that invention can lie so
applied without the aid of any other inventions
7. The question is not whether it can lie added to or
applied on a tong circuit.
Its addition to, or its applicability to, a short circuit is
sufficient, e. g., New York to Philadelphia.
8. The question is not simply whether it can lie so
added to or applied to a chemical automatic telegraph.
It is snllieient if it can he advantageously added or ap¬
plied to an automatic »i<q//n7iV telegraph, or an;/ other kind
of automatic telegraph.
fl. The question is not, ns assumed by defendant's
counsel (fols. 1 1100-1802), whether it is any' improvement
of or upon “ tho automatic, system In/ itski.f.” It is suffi¬
cient it, upon being added or applied to any automatic
system, any advantage is derived from such 'addition or
application, although it might not he embraced by an ns-
sign ment of “improvements in, of or upon automatic
telegraphy." (See this distinction referred to by the wit¬
ness D’lnfrcvillo, fol. 718.)
I inventions embraced by the deed was not confined
I mere right to use them ; th v.fu/1 title to all of them p
S as soon ns it should appear that they could ho ad van
onsl.v added ornpplied to automatie telegraphy of any
(Seo Argument, pp. ,)
If. I lie question is not whether all the mechanical
trivaneos specified in Oil can lie added or applied to ni
tomatie telegraph.
If tho principle claimed in the 1st claim can ho so a
or applied, it is sufficient.
So if any or either of the muchanieal con trim
specified can he so added or applied, it is sufficient.
12. No. fill is not a mere combination. It is for disi
| devices liko Cook and Wheatstone’s patent, which wns
!' subject of litigation in the ease of The Electric- Tcleiji
; Company v. Hrctt, 10 Common Hatch Hep. 888.
\ >s«u P- f’S2. The court states thu objection to
l plaintiff's recovury to he in substance that the plaint:
patent was for a system of giving signals by means of
eral wires and converging needles pointing to lull
whereas the defendant had used one wire, and had lit
signals by counting thu deflections of a needle or licet
which was found by the jury to he a different system It
(that of tho plaint ill's.
The defendant argued that thu patent was for a con
nation of devices. The court held that it was a patent
the several specific claims.
13. Tho
muddied liv
„„ instrument of assignment with appropriate cove-
The Western Union Inul notice of nurrington’* title
lietore 19 August, 1874, nm! especially la tort. .
,) Kilison Inul no title, either legal or ccp.ituble, tlmt «
could transfer to I’rcscott.
W Prescott could tuke lmlhin^ under tile deed ut
August, 187-1, because lie could not hold jointly
Edison, contrary to the provisions of tile prior tM,n'
tracts hut tveun Edison and Harrington.
o) The inventions having been made prior t«< 1«
August, 1874, Harrington's cipiitnblc title hud pre¬
viously become a legal title
(<l) If Harrington’s title was equitable only alter the in¬
ventions were made, such equitable title could not
bu defeated by the instrument purporting to he »n
assignment of the inventions in question by Edison
to ldniBulf and another, to hold in partnership he-
Prescott had notice of the prior equitable title of Har-
ington before any contract was made between Edison and
?rcscott.
(«) Prescott knew that Edison had intimate relations
with Harrington in regnrd to inventions in electric
telegraphy (fob ). And Prescott had constructive
{/') As Prescott and Orion co-operated in re-artl to tin
agreement between Edison and Prescott of IS
Angus, 1,874, IWntt is atleolcd by the nolle.
in h is-a “"I 'T-'"' L'0"ve‘'satio" Keilf
" J""“’ Eeiif told Orton that Mamie-:
ton controlled all of Edison’s inventions.
0> til'*'1!! hml 1,0 Motiue’,,s 8l,L'eilied above
(«), (A), he could not set up Ids rights under tl.e eon-
tract «rf 1!) August, 1874, as superior to the title
“ ‘V11™1"""1 . . tile partnership deed of 1
October, 1S70, or under the deed of -t April 1871
I reseott could not I, old with Edison a moiety of
the pi o Its to he derived from the inventions by any
luittcr title than that held by Edison himself.
I Ins is not ii easo where the holder of a legal title
has priority over a prior equitable title of which lie
had no notice.
J There was no law authorizing it to hu recorded.
Even if It hud been legally recorded, it would have
been notice only of the record as made, ami consequently
would not have been notice of the true contents of the
r .• original deed.
, Tl,° lo»“l operation und eifeol of the original deed (in-
. depondently of the question of notice) are not affected bv
||f the error in the record.
si
gj lllu ''f11"1 U l icc 1 c cl g j ] , s future in-
volitions that should successfully develop into practical use
: any automatic system of telegraphy, makes the question ns
g to the word “ or ” in the granting part of the deed of hut
Effect of the lteeor<ln‘<J <‘1 >
. . . t... of the feet thnt
nurslitp ileott of 1 October, ISe».
(„) There was no legal nnthorilr lu record either of ife*
‘‘‘Ami the net of Congress which
* reeorM M. « 11 lmur \ l
is conlincil to assignments ot patent nglrU: Mm
patents issued.
(b) The !l‘t section of the Ihdenl Act of 1S7U, »ntlo..i«-
inK the issue of n patent to tile assignee of nn
vention, and reiiniring such assignment to he f
entered of reeortl in the I’atent Othcc,’ applies » nlj
to a fall and complete assignment of the entire title.
The deed of 10 August, 1 S7-1 , contains only an
assignment of one-half of the title, and that is »»
assignment tnib inn/ln only.
(See Argument, pp. •)
that ',1,0 legal ,,llu ,y 7 August, 187-1. The «,...n.n
is legal or uqtntnl*lo meiolj i»
question discussed, page )• .Idiveretl to Pi
. . . »*•»- .
a-
dccrco that Prescott shall release or assign that le gal
to the plniiiliil', it being the equitable owner.
It will he observed that the Western Union does
by its answer claim any title under the deed ol
dated U December, lS7f>.
A’ or does the Western Union by its nnswei dun
title under Prescott other than by virtue ol me ai
purchase from Prescott and Kdisoii oo the terms -
proposition alleged to have been accepted by Orton s
to Kdifion and Prescott, dated .lammry 1ft* loi* .
The plaintifl' is entitled to the judgment or <
rayed for against the Western Union that it shall r
® Vtotlon. Hs 10 H'o »■>'<• titlTtoZ
of P. "lmi,r should ,,0. i .
1 1 s .1 1 1 , ai«, ■,
"uiin tiii„ „ mm!! I’U'intiir seiii„.|itL,i.. .
B PhiintiO' ns nnl!. . 1
. tnnt if tjl0 .
Iicrcinnf'tor pel forth.”
Under Art. 7 (ltd. 339), Miirrin^loti advanced IVom
time to lime large sums of money for the development of
inventions by Kdison, such ns lira contemplated !>.v Art. 12
of tile copartnership deed (Ibl. 33ti), It will lie observed
tlmt tliat arlicle provides that mnehinery, tools, Are., that
might lie found necessary “ to develop inventions and im¬
provements and make experiments," Are., need not lie made
at the factory of the linn.
Harrington obtained the funds from Ids friends for the
development of the inventions, and arranged with them
tlmt they should participate with him in the proceeds of the
patents.
It is contended by defendant's counsel, tlmt the iiinnii-
fnetnring business and the manufactory set up by the co¬
partnership on Railroad avenue, Newark, having been
abandoned, there was a total destruction of the partnership
in every respect, and for all purposes. That proposition is
manifestly untenable.
Edison left the shop in September or October, 1871.
ind Harrington continued the experimental manufacture
lioro for a short time without Edison's co-operation at that
’lace. What was done there was for the most purl merely
jxperimentnl during Little’s connection with thu automatic
lompany, and was unprofitable, Hut Edison steadily and
lontinuously pursued his experiments at the shop referred
o in the partnership deed as being hold by Edison ns a
lartnur with Unger.
By the 12 th article, the lunuufnctnru ol mnehinery in-
trumeuts, tools, and oilier articles “ necessary to develop
nveutions and improvements and make experiments” for
The partnership in inventions continued
fact tlmt tlic proposed nutd'ii fact linin' b
. a failure.
Tito expected extension of the nutniii
happen, and, therefore, the expected
come to purchase the automatic appnn
donee, Report, fol. .)
Edison’s testimony, on cross examina
that there was no necessary connection
lions in tlic workshop which Edison alia
volition-. It will lie observed that pn
art. S, fol. 327, for a reasonable and pn
| to Edison, for his inventions, which migl:
I or arise from the current work in thu mm
payment to lie in mliUtinn to and irrer,
, portionate part of the profits of the hast
; which thu parly uf the first, part would
titled.”
!} Arbitrators are to determine wlmt it
,! proper” to be paid for such nriqmat
I 328.)
i Edison mndo no claim uudur tills elan
:j , pensation. He was content with In's one-
The true meaning and effect of this pa
; that Edison and Harrington wore:
; 1. To lie joint owners of all of Ed
:> (Eols. 319, 320.)
2. Tlmt Edison was not to invent air
' contract with the Gold and Stock Comnnnt
tic telegraphy.
,0 '* evidence that Edison culled for an arhilru-
determine what extra compensation should lie
to Inin lor liis invention of (he ipia.lmplex.
contract, however, clearly inelndes it. ami it is im-
I whether Edison so . . the deed nr not.
the deed of assignment of J April. IS7I, Edison
issigns In's inventions made or to he made by him
. . ,I1S|- telegraphy, and such further inventions
gilt make, and which being added to nnv ni.lo, untie
rstem then existing, or which thereafter might lie
«».vhoily, wniiM improve Hie sjuijo.
hind himself not to invent, under
net with the Gold and Stock Co., any machinery
automatic t olograph v.
Id militate i
■ » no provision in Unit deed to tile effect that,
ml he allowed a proper compensation, to la. sot-
flHtrntmii, for such inventions as might not lie sng-
llm" . . . the current work in (lie i
the capital supplied by Harringtu
liis and tiiuir ullbrts to develop tl
those inventions were to become t
Ion and Edison, thu latter taking i
thereof. The bargain was an udvi
for by it lie secured the co-opuri
other parties through whom it win
volitions available in a business po
Tlie partnership deed provided
now inventions might, be made el
tory of the linn (fols. :«!(!, (
were made accordingly at the sho|
amt Edison and Murry, and the u
molds were paid by Harrington (ft
The partnership deed makes sp
inal inventions that might lie made
or arising from the current work o
Other provisions of the contract
this clause, which clearly embraces
for the benefit of this firm.
•In the present ensu Kili-mi coni, I not, at bis more will
nncl pleasure, deprive Harrington of the benefit of the eon-
tract", the pnrtnomhip deed in respeet to tbe inventions
Inch lie (Edison) bad made or might thereafter make dur¬
ing tlie period el live years.
Harrington, noting upon that eontraet, expended large
slims of money, by which expenditure Edison was enabled
o cstahbsli a great reputation, the fruits of which lie lias
drendy realized or may hereafter realize.
Tlio legal presumption is, that the partnership erne
imied tor tlie period for which it was formed.
Story on I’nrtnersliip, see. 271.
“Parties may , he c i t t It , ti n „ tit tei
'cr I’a rt in ii'rili ip agreement, which mav be evidenced
ut m,l>’ WW'ii'K 'mt also I.y their conduct. ' I
England v. Cueling, S Honvnn, 12!* ; see also,
tol.yctr on Partnership, sec. 210.
I lie evidence in this ease, so far from showing that the
partnership, in regard to inventions, was dissolved, siiowf
clearly the contrarv.
Mr. Keiff'e Texthnon,/ in chief an to the J'artnershij).
Koiff proves that in the fall of 1S70, lie lieeamo in¬
terested under the partnership deed between Harrington
and Edison (tol. 147!!), and made payments for Harrington
to Edison between September, IS7H, down to IS75, botwuon
¥00,000 and ¥70,(101) for experimentation and in developing
Edison’s general inventions, and in connection with tlie
line about ¥1-10,000 additional (fols. 147!!, 14S0).
Hcitl proves also that lie represented nearly all tlie
parties who contributed tlie funds (fol. 1472).
In answer to tlie question “ What limit if any did you
put upon tlie scope of his (Edison’s) experiments? ” Roiff
answered : “ We asked, him no questions concerning tlie
field of In’s experiments” (fol. 1481).
ali'llw m,,U'’ U 1 ""lt lm «'• the partner,
-on rt of equity will liold I bat tbov hnni . . . .i... .....
Tlie payments to Edison wore almost continuous during
tlie whole period, with one or two small bronks of two or
throe months each (fol. 1482).
B I'iHt;nrs. I’lamlifTV K.\ litbitrt, V (f„|.
1{oi,r 1 1 L u 1 I » tl 1 disOII in the hitter
' 01 ,hu ,ilst fow ’Hys "f .lul.v, in relation to
proposed »al0 hy Jvlis.m 0f |,is inventions of ll,„
Implex to tlio W. li.
IJuilT says :
a""° 10 .'"mI s“i'1 llu "',,s 1,1 (frent
o o moltin' lo meet Ilia pruiwiu^ necessities, mill
,IU £*« « •»'“ Ms >|HH(lrltpleX to i|,o Weston,
)» telegraph Oompnny, mnl it would give him some
o.v to get fum mil of Ills present difiieultics, ami it
IIS «». »'«J l'« thought j„. or, have
. " 1 "'i'1 lli'» <l>«t it u'oulil very seriously
“ ”fi’ al, ,lu '"usl . •or <io circumstances give them
mu Iriipiex ; that 1 would endeavor to furnish I, in. the
• !'° ‘■'e,lei •• Unit we wo . . . ,,p some
r;!L ,U|| 'V' 1 -." ”S ,lj|‘ ,*IU I,,lrl"i'U of paving nil a
fi'ge that was then pressing him.
• On what?
• On some properly in .Newark.
my l;;:;.;'1 ,,ure,w,,“oriiiat ••■pp^m
■ $7,000.
How suon alter this!
e 'hUrt'iT llim "“! !,<l dVof Julj.
t ho released O l,,,0",l,s the month of dul ',
° lllu mortgage of $10,001).
l“« dny iLt '& I.1*01® 11 % " ‘ ‘
‘ t'm thing must he stopped” (Ibl. MOS).
body the right to use, manufacture and so on. ReifT tot
Edison that was a saving ulause, “ and tliut ho must tak
no money under that contract,” that he (KoifT) would mis
the money reipiired ; Edison said “ All right, or somethiti|
to that elleet.” And ReifT after that interview arrangci
with Harrington and a few others of tho associates to furnisl
Edison with tlio monoy to pay off tho mortgage. Reif
gave Edison various amounts during the month of .July
187-1, so that Edison released the mortgage of $10,001
(Ibis. 14115 to 1409, 1603, 1604).
In the fall of 187-1, ReifT, luiving general eluirgo of tin
business, invited l-ienl. Eekerl. and other employees of tin
W. U. to accompany him (ReifT) to Newark to see some u
Edison’s inventions.
At ReitT's request, Edison on that oeension set up liii
double transmission for (lie party to examine (fols. 1484
1-185, 1505),
Cross-e.ramination of Mr. Reiff by Mr. Lowry as to tk
partnership.
Mr. ReifT said that the moneys which lie paid oat to
Mr ;|Edison, and for Mr. Edison’s experiments, woro lor
account of Harrington and his associates (I'ol. 1583), and
that those associates paid out a large part of the expenses
of the shop at Newark wliieh Edison started (fol. 1584).
Witness begun to pay the expenses of tlmt shop in
February, 1871, after lie became interested in the automatic
telegraph, and knew of Mr. Marringtoii’s contract with
Edison (Ibl. 1585).
Q. By Mr. Lowry. Now tlio patent's which wore
afterwards received or issued under this agreement of 1870,
1588)'.I,S°" "',,R Uf . . "{ n-',Tln«tu« m
Edison remained (ilu s, Q
Srt5L,h"‘ r . W‘* .
1580, 1502). ' r0"rai"L'11 «" ">« *liop(J.
-«Ssr*z »:r *•
^*KS3i£,!&Kr';£.*i
suites (lol. 1597), Harrington ami Ins asso-
rhulher llioru was ,
i»K‘on which did
I^atonl, March 19, I870 r01, u . ,
nph recording instruments ” I">l”<*voii»ent in tule-
‘ic Telegraph!)""8 <l0 "’"ll K(liso"’fi Auto-
Patent, January 14, 1873, for r .
CPIuintift*’e Exhibits, tbl. 343.)
Patent, August 18, 1873, for “ Improvement in lie
lay magnets.”
TI10 object is to avoid adjustment of the rotraetilo at*
mature spring.
(Plaintill’s Exliihits, tbl. 348.)
I’atent, Poll. 10, IS74, applieation filed July 20, 1873
for “ Improvements in Eleetric Telegraphs.”
The “ invention relates to the discovery of a method 01
ueiituli/mg tlie t-lleets of the static charge in any length ot
lino or eahlo by balancing tile eleetric forces, Ac.”
(Plaintilf’s Exhibits, lol. 357.)
Patent, dated March 2, 1875. Application liled July
29, 1873, for “Improvement in Adjustable Electro Mag¬
nets for iielnys, Ac.” This “ invention is made with ref-
orenco to obtaining a uniformity of current in the electro
magnet, and avoiding the adjustment of the magnet,” Ac.
(Plaint Ilf’s Exliihits, lol. 308.)
f he inventions for which these live patents wore granted
were to he included in the negotiations (lid. 1402), with cer¬
tain parties referred to by the witness Jleiff. Ho says :
“ We knew at that time that Edison hud made very groat
improvements in other directions than the automatic sys¬
tem which we were using, and we proposed not only to
utilize those, hut to get from the other sidu (Europe),
whatever there was good at that time, and consolidate it.”
(fol. 15 10).
K0'«’ a»«wore,| that his early did n um
» to make those inventions at all (fo|. o.'iOl). He *avs
.vih'iri «,|"«««» «>•! c-,mw
a I l l ? ",|BKr"1,11 co,nll|1,ttos> ami will, cur-
onf the 0„arr/ ,""!“ii“iiro'uioo"|i,a"ius 11,1,1
Josirc I to a v 1 T1'"1’ ' C'0,nl,n,,k's- will, which
c o all>. I made known to them that in case I
l
e will! , b » ' ' C 'L 1 1 t'ctu to make anal. |
. Hut yon discontinu'd! t
Ami see Edison's hitter to the t Vnn
referring to I lie deed of 1 Oetoher,
grounds of Harrington’s title.
' !/ uf ‘I <>'■ .1/ mrio/ i,» behalf
n/avtimj the Pftftnei%
r says lie knew of (lie orgn
gton and Edison in IS70, a
lit, lieoaiiso Mr. Edison Inn!
Inrrington in nianiilaetiirim
• ill, US).
Iiad another shop in New
Murray had a conversation with Hu
m left, tiliout Ids going back (fol. 120)
iv (Ibl. ), It'll'
la'il Ills iijiiniiin
■V us atiu!n*t M.
lot formerly claim any rights under tin.' part nc-'ivl,i|!
altur the . . a- of tin- innMuf.iotnring bn-ini-,
ine, according tu. Mr. iSorrcll's testimony (Ibl. ), J |„P.
on. on 2“ Septembers 1874, iislad Ills opinion
lior ho was entitled to tlio <|iindriiplcx ns u^nnxt Mr
l/iuoii. upon llm deed of I .April, 1871 '
lint inny Imvu boon bouau-o tlmt ilooil was ivi-orded in
•tilotiL ofllco on II .May, 1871, whereas tlio partner-
looil null not then boon recorded nt nil, nml .Air. Har-
i" Way bnvo formed tlio opinion tlmt, in point of law,
lend would not bo available against tbo recorded doe, I
August, 187-1.
- between himself and KdUon, Harrington olnime.l tbo
iiiuloi- tbo partnorsbip ilooil of 1 October, 1S70, as
id by Ids referring Murray to tlmt deed about the
tune tlmt bo con-tilled Sorrell (Murray, Ibl. ).
'fondant’s counsel, in arguing . . tlio partnorsbip
landonuil, tail to slate whole and bow it was aba It-
,llu l"ll',lll‘lslii|' ngrooiiient be-
,m s"ml‘ 1,,ld . . . in iU seope, the small capital.
as expended; strangers wore introduced into tlio
'•iso; Hie scene was shilled ; a telegraph lino was
,- nersliip in inventions was dissolved. If it I
\i would have been some arrangement as to t
I us bad already been made before such disso]
1 Tlio proof is dear, tlmt large sums of u
j :j pended continuously by Harrington upon I
iff nionts, and it is a mere gratuitous assertion
nersliip was abandoned.
i| There is nothing to militarize the court
r| tlmt must Imve been the case, seeing that al
I conduct of tliu parlies are consistent with tl
S of the part nersliip.
I It eauiiot lie pretended tlmt there is a sli
t; to sustain the conjecture tlmt the partnersbi
I as soon as the #11,0011 was spent, or as soon
agreed to divide bis two-tlnnl* with Heilf ai
soon as tlie deed of -1 April, 1871, was excel
“ No partner is precluded from onturii
partnership with a stranger, mm Mieii mi
wi'wfwii ikI. In such case tliu stranger
i' prolits of the partiunlar partner with wlmtii
j( and not being engaged ill the general parti
( course not bu liable for their debts.”
I Collyor on Partnership, by Perkins, sect
U ,Jp nr"1' , "l"1 "mt ■•nrrington secured the
•T i "* lul associates as early as the fall of
Ol. 11,8, 1-18(1). Hut tliev . . -it..: . ...o,
\U\y 0, 1871, Edison assigned to Harrington two-thirds
n interest of his inventions therein referred to. This decil
loes not expressly refer to the nrtieles of copartnership.
This deed rceitos (fol. 3-15) Unit Edison had agreed to
went and construct for 1 1 arrin«it..n, “full and coniplcto
Usol instruments and machinery that should successfully
ml economically develop into practical use the Little or
ther system of antomatie or fast system of telegraphy, and
ibseipiontly to improve and perfect such instruments
nd mndiinciy by adding thereto Hindi further invention*
s experience should demand and mv ability ns an inven-
ir and electrician might surest and' perm it'.”
And to prepare papers, Ate., to obtain patents to be the
nnt property of Harrington and Edison, two-thirds to
Inmngton ami one-third to Edison, “ the whole to bo
nder the sole control of said Harrington, to ho disposed
by him lor our mutual benefit ” (fol. y.jr,).
It further recites that Harrington had InitiHcd all the
ivenants and stipulation- entered into by him
i lie deed declares that in consideration of the recited
jroomeni, and of the sum of one dollar, Edison assigned.
Harrington two-thirds in interest of all his said inn
KIS1”' . . .
Ami the following words are added, “and of all and
“. soever of my invention* and Improvements made or to
made, and of all the patents that may he issued therefor,
it ate or may he applicable to automatic teleyraphy."
An ir
cr of at
. . . 18 milled, giving liar
I ei to sell ami transfer Edison’s one-third. Till
‘doIhrTVT"08, 11,1,1 11 18 «iv0" in ,!0,lsideration
","11 or the purpose of securing the advai
■tmtulaml harmonious action” in negotintim,
give title to the exclusion of the other.
The consideration apparent on the face of the power ol
attorney, shows that it is a power of attorney with an in¬
terest, ami is not only by its terms, hut from its character,
irrevocable. The deed shows a pecuniary consideration,
ami the desire of Edison to obtain “ the co-operation and
assistance of Harrington.” Harrington accepted the deed.
This deed did not operate so as to extinguish or afloat
any of Harrington’s rights under the copartnership deed to
other inventions of Edison not embraced m this deed.
As to this point, see page
Harrington's Title embraces the Talents for the Inventions
in Question. It is not eunjined to the /light to apply
them to A utonuttic Telegraphy.
It lias been erroneously assumed that it the deed of 4
April, 1 $7 1, embraced the ipiadriiplex, it gave only the
right to use it in connection with an automatic telegraph,
and that the tillu to the inventions, subject to such right,
remained in Edison, who accordingly had the right to dis¬
pose of it to I’reseott and the Western Union. That er¬
roneous idea appears to have been entertained by Edison
and by I lie Western Union and Prescott.
The deed of -1 April, 1371, embraces the. entire title
to any inventions which may be applicable to aiitouiatie
telegraphy, or which may lie added to it. That deed docs
not confine Harrington’s title to a mere right to use the in¬
ventions in automatic telegraphy, leaving Edison at liberty
to transfer the title to others, subject to that license.
Whenever any invention of Edison may lie applicable to,
or added to any kind of antomatie telegraphy, “ all the
patents that may be issued therefor ,” are embraced by tho
deed, and are thereby assigned absolutely to Harrington.
will., and the plaintiffs east- on this deed would” yetbe
fin Indent.
Even if Hu. r«druplox wore nut applicable to nut
mntic telegraphy, within the strict meaning of the wo
applicable,” still the qiiiidruplex is an availalile additi,
to the untoiiiiitici within the meaning of tho word# “ furtli
mictions ” that may ho profitably added to the ant
applicable to auto-
aning of (lie word
available aifi/ition
It will bo observed that the words “ further inveutions "
th! y(o,0r , A “"tract that Harrington shot.ld have
to ov It °! mvcntiol,Iiof pavements upon”
10 '• ,'1* ™"" -
r t n* worA “ w ” "• the Deed of 4 April, 1S7I.
ten with <lee'1.!? in Harrington's handwriting, and writ-
ton with a quill pen. In the clause at tho end of tho grunt¬
ing part of the deed, tho word » or ” is blurred turn e
y t!l,l'0"gl‘ H,l,ni!' lmn'"H been in the quill pen. ’
I he niochiiiiicul printers referred to in the deed and
bo inventions or which were thereby assigned by Ed iso
to Harrington hail nothing to do with telegraphy?
njt^ddbo absurd to call then, auto,,,,, holograph
They wore merely for tho , .unman „r .•
aages instead of their being w ritten by a ici, * "’C9'
They might ho used in another room t
building, away from, I, otelegrapl; , CI „
«aH
dition to the granting part of the deed, was appropriate to
carry into effect the recited contract of Edison, that lie
would invent machinery to develop automatic or fnst teleg¬
raphy, and add thereto his further inventions.
It is generally understood to be unwise for a purchaser
of a pnteut right to tnkc n mere assignment of it, leaving
the inventor at liberty to supersede it by subsequent .im¬
provements, which lie may disposo of to other pnrtics.
We are called upon to believe that Mr. Harrington,
earing nothing about any future inventions applicable to
tho principal subject of the deed, viz., automatic telegraphy,
took no assignment of such future inventions, but carefully
providod for the transfer to himself of any inventions which
might be made thereafter applicable to the interior subject,
tho machines for printing copies of the messages.
Tho argument of defendant’s counsel at first, was that
it was the intention of Edison to avoid giving Harring¬
ton any future inventions applicable to the printing inn-
chines, because that might come in conflict with Ids,
Edison’s, engagements with the Hold and Stock Con, puny.
Seeing that the absolute assignment of the inventions was
not inconsistent will, tliu rights of the Gold and Stock
Conipnny, an assignment of improvements which might af¬
terwards bo made thereon, could not come in conflict witl,
the rights of that company.
Edison save that lie tiovur, before tho commencement ol
this litigation, heard his mechanical printers called “ auto¬
matic telegraphy muehnnieal printers” (fob ), and that
there is nolhuuj tt'ltji'fi ph i c about them. Unit they were
used merely fur copying the messages which would other¬
wise be copied by pen (lol. )•
If the word “or" had been omitted in tho clause rofer-
tWtUS).
the (piailriiplox tu it (tuls. 23 1 *» to
witm i 1 'll s tlio ml vimtiiHos ol' a|
ulruplux to “ » system of telegraphy in wh
asioii is automatic, ami tlio reception of tlio
says : “Tlio advantage would 1m gained just
as tlio capacity of an electro-magnet is great
iioitv of a Morse opovator to uiako tlio sip
lom’witli a poll — which is witliiu lauiuils tc
t., I suppose” (fills, am 234*4).
Farmer'* Testimony,
j dofumlaiits culled Mr. Kanuer, an export, t
io iuvuiilioii ilosorilioil ami specified in 01!
ible to “ tlio autoiiialio system ol telegraph
o witness says :
,8 / hare tlelM autonudir. telegraphy, tli
„ is automatic ; tlio reception olcctro-cliomi
•innguutic. With that definition ami that
1 ■.,111111,1 sav truthfully that this was a|
wliicli Prescott would have the legal title jointly with Kc
ion, absolutely wit limit any ipudilieution whute'vcr, ami I
nrlmi «r which he (Prescott) could (-rant valid licenses.
It may lie said, however, that Edison would not ho pri
tdiced hy the fact that the patent, on its face, makes Pre
tott absolute owner of a moiety of the patent, hccausu tl
issiKiime.it of 1!J August, JfST-J, to Prescott, which is t
nrdeil, shows the contrary. That restriction depends upc
-mire contract. And it raises the ipios.ion whether . I
seord ol that . . cut is notice ns to which it is to I
bservcl that the ahmluhamynmcntuf h
r"'f ,.C is recognized and impliedly ,u
ices cases of partial assignments, but that thu till
the Act of 1887 is eotdined to cases of nssigmuoi
idle right, and ho thinks that a patent issued o
ghl he held contrary to law. “ Tbe Act <d l
Black,
attnehod against the assignor. !'• S. Sainpergtit;, 7
l’erkins (|
!2.
What
ii a emifliot Ilf equitable eluints. I lie ill ^ Inw »»
is good m
i ill equity is >/"! prior mf tnnporr potior rtljvrr.
tiou to lea
between different mx^i^uuu- of a e-luVe in notion
Kvidu
g by i-xiues- 11 — i^iiiuont from the snmo person, tin;
he ,-utlieii
ior in point of time will lie proteeted.
prior min
o fii-c-L as-ignmonl divests the uquitnblis right ol the
That dist
or, mill bis legal interest is not assignable.
Arts, S
lere ■ is therefore nothing that ean pass to a seeoml
The
Adr v, Sehenek. a Mill, 22S.)
proved.
imp on liankriiptey, oil. 1S77, p. 4»4.
I'lie assignee lakes the property of the bankrupt sub-
Crated b;
o all legal ami equitable ehiinis of others. He is
A re
eil by all the equities wh'uili ean lie urged against the
■ii pt."— Cites 2 Story, 331, 86.5, -102. U3U ! K«Uy ' •
oil by e.
, 4!l S. Y. 51)5 ; IS Wall. 322, Are.
Win
room's Maxims, Qui prior , cLr. p. 381.
It is a general rule of the law ol England that a man
liounil 1
I or controlled all of Edison’s inventions,
is referred lo Reid's testimony on fol. I ttKJ, that
lfton“that all of Mr. Edison’s inventions won1
I by Mr. Harrington " (lid, th'tti).
)rton is now asked :
Mr. Reifl say that to von or any part, of it "•
it ness inquired :
! litis question re(|ttire n m/n/rn'oi/ uwm-er" (let,
oaW: The question is, did the conversation occur
detailed in the question and answer that have
to von (fol. (135).
I i/m'wi: “That is imji/inl in the questio . .
hiuh were read to me wliieh did not occur. The
ion related entirely to automatic, and among the
ms made, was that Mr. Edison’s patents were
tr. Harrington, not. having I men conveyed to the
u Company.”
ssertion that thu question and answer implied
that did not occur does not contradict Heilf,
3cs the answer to the next question.
Q. Did you sav thu
what would induce liin
self secure to a satisfae
.1. I did not, emy
alreailv made as to the
(This is
f. Did you say tin
arranged that you col
Mr. Prescott (
.A. I do not remen
Q. As to thu remai
(Handing printed
/I. 1 desire to rep
answer that 1 have p
rie* /ml by me touchit
patents that Mr. Ruill
lington, relating to ai
All thu testimony
with Ruin's havinif ti
Baldwin v. Mima, 2 Wend. 302.
Petal's v. McKuon, 4 Den. B40.-
f-'ongor v. Wheeler, 20 X. T. 140.
itt, having no right to damages, and no right to a
oeitio performance of that part of tlru contract
Hires Edison’s action, it would ho a great failure
and an anomaly if Edison could obtain no relief
’“"tract, but mast remain subject to Harrington’s
damages.
the W. II., its claim of damages against Edison
y unfounded, for it had no complete contract with
A title obtained by liter
defeat a prior equitable title
o suit toi a specific porformnnee can bo niain-
in an imperfect contract when the terms nrc not
r v. Wilson, 17 N. .1. Eq. Hop. 180.
i a suit in equity to compel Prescott to assign his
tic to the plaintiff. And the plaintiff can main-
it on the ground that the title' hold by the do-
Equitable estoppel in pah.
The alleged lacts upon which an estoppel is claimed
have been already briefly referred to. Ill more full detail
they are as follows :
In February, 1873, Mr. Orton, president of the West¬
ern Union Telegraph Co., on being Informed that Edison
said lie had invented improvements upon what is called
Steam’s duplex, and could invent vnrious different devices
for duplox telegraphs without infringing Stearns’ patont,
entored into an ongagemont with Edison to thu ofl'eet that
lie should be allowed opportunities to test Ids said inven¬
tions in the oflices and upon the lines of thu Western
Union.
The tests were to bo applied at night, so as not to inter'
fere witli the business of the company (Ibl. ).
In consideration thereof, the Wes'turn Union, it is al¬
leged, was to linve the right to purchase the inventions, or
tueh of them us it might desire to purchase, the price to be
■greed upon by Edison and Orton, or settled by arbit¬
ration (fol. ).
Tills verbal agreement is paraded as an agreement
3 renting the relation of employer and employee, and it is
jrroneously assorted that Edison solicited the Western
Union to give him employment, and then the ease is
issimilated to that of the Windmill Companies, 8 Blatcii.
, where a workman who was employed as an uugineor
n the defendant’s mill at a salary agreed to make some in-
runtions in the conrso of his employment and to assign
hem to the defendant, instead of which lie assigned them
o the plain tiff. The agreement was in writing, and the
When the alleged agree Lit ■ <■
Edison and Orton was ontorud into, Edison showed Orton
some drawings dusurihidg Ids devices.
Edison tested some of them for 22 nights on the wires
of thu Western Union (fol. ).
Afterwards, on leaving Now York for Enropo, on 23d
April, 1873, Ini left a power of attorney witli Mr. Millor to
dispose of the inventions to the Westorn Union (fol. ).
Nothing appears to have been done by Miller. No
attention appears to have been paid to the snbjeot by
Orton. He says liu at that time attached but little import¬
ance to thu subject (fol. ).
Nothing more was done until 1871, when Edison re¬
newed Ids experiments on the Western Union linos (fol. ).
And on May tilth, 1871, lie wrote a letter to Prcsuott,
the electrician of the Western Union, and ottered to give
him niio-hnlf interest in the inventions (fol. ).
Edison's object was to get thu influence of Prescott
with thu Western Union, so that ho Edison might have the
required facilities for testing Ids experiments, and might
also be aide to elluct a sale of Ids inventions to the Western
Uidm. (fol. ).
On 9th .Inly, 1871, an instrument, was executed b,\
which Edison transferred to Prescott an interest in the in
volitions. This was shown to Ruhr, who stronuousl;
objected to it (fol. ). On the same day Unrrmgto.
wrote to Edison, urging him not to make any contract will
the Western Union (fol. V
The next day, 10th July, an article appeared in tli
New York Times, describing the qnadinplex.
itaelicd by Hm
'vnien were numerous unci ot grout length, whereas the line
of the Automatic Telegraph Company, of which Harring¬
ton was president, oxtonduil only from Now York to Wash¬
ington, and was therefore too short’ for tho tests.
It is not unusual tor telegrnph companies to allow thu
iibo of their wires and apparatus by inventors to test their
ixpomuents.
There was nothing to load Harrington to give or send
lotiee to thu Western Union that Edison was under cngagu-
nont to him.
It was only when tho duplux was metaniorphosud into a
p.,..l. .,plo\ tli, it Mr. Harrington became alarmed.
In the language of Edison, the claim of Harrington
vnB made “ because it had turned from a duplex into a
luadrupfex ” (tbl. 1058.)
At first the object of Orton was to have various modes
if working duplex invented and patented, so as to close the
loor to competitors in that, line (tbl. ).
Harrington probably regarded all devices of that kind
» ol no importance to the automatic telegraph system.
Ho may have known that Edison had spent 22 nights
i testing his inventions on tho linos of the Western Union,
s above mentioned. No reason appears now why lie
'onid liave objected to it. Nor does it now appear that
liere was tliun any reason for his objecting to a sale of such
■volitions to the Western Union, if Edison could negotiate
sale of them on advantageous terms.
And it may be added that Hnrrinirtnn mtnht .,.,,1
tiling aiiogu.iie.. ...... L that
for saving that Harrington, n tei hi. i.u.s in ^
. *"**■
Western Union to make such l'uvchiiso.
It is not important to consider what o|duio"8 Ibirring-
ton may have formed upon the legal eltect ot t lie '»>>
ilecds cxeuuted ..' Edison may, In- J T
posed tlmt he would 1ui\l to } „ . tint, deed
defeat Prescott; also, that the word ,n . *llVoct thl
was of paramount importniiue, but that tan
true legal operation of the instrument.
When it was shown to he practicable to "oik the q
rnplox, Mr. Orton assented to the arrangerneii m«d^
t" Le„ L lison anil Prescott, and opened ego it
them for its pur . ise. Before that .me ‘'1'
nothing to Edison; there was only the use ol the ".its
“ISTSi^tS fori "a
Prescott was opened, some mono) "as .|
Western Union for machines.
the* right' to'purulnisu the quadruples as an idlsho ot.supi;
ment or sequence of the duplex, the latte, having tit
.Yininnioroliosed into thu quad ruplox.
mug Ins own property lire highly puiml in their eliuruc-
mill ahem Id not be enforced unless there is n eoneurreneu
ircuinstnnocs such ns lire necessary to the creation of
ipiitnble estoppel.”
Hie rule above referred to, that one claiming an eipii-
e i mtoppel in /min, on account of silence or apparent
licsceuco must show that he used due diligence to
rtain 1 lie facts, and that lie laid no means ol ncipiiring
knowledge, would of ilself he siillicieiit to dispose of
claim of estoppel in this ease.
Moreover it was never supposed that tile payment of a
llimiount of money on a bargain madewitli one having
itle could entirely divest the true ownor of ids property
nisu lie Inn) not been diligent in proclaiming his title,
iitmust result ol such negligence would he a right to
ompensiited for the outlay.
See per V. 0, in Ingram v. Thorp, 7 Hare, 70.
Here the Western Union paid out nothing on the
igtlint the alleged verbal understanding between Orton
Edison, which was tirst entered into in February, ls7H,
, untlll.V afterwards, and the partial payment of the
liderution were made on the strength of thu antici-
.1 ].liiel„ue.l by the Western Union and wore made
nvemions Kdison slMiulii Iju entitled to receive, ns inventor,
ilioulil lie ii] >|>1icm1 for In him, nmi ho trans-fcrrc-l l*v him to
ho defendant. llio Western Union Telegraph Company;
mil that for all such inventions ami patents lit: should te-
receive such price as should lie just, ami that the amount
.hereof shonhl he ascertained, in due lime, either by agree-
nent of llie parlies, or, if they railed to agree, by iirbilnt-
ion.
Third. — That, in pursuance of said last mentioned agree-
nent, the said Kdison began such experiments in Kchruaiy,
1878, and continued tin; same until the month of .lime,
187-J, and the defendant, thd Western Union Telegraph
Company, daring the same time, furnished to said Kdison,
in pmsnanee of said contract, facilities in material and in
the use and service of its lines, operators, workshops,
machinists, and other employes, and in all other respects
performed said contract on its part
Fuurlh.— That on the first day of .Tunc, 1S7-I, the said
Edison entered into an agreement with the defendant,
George B. l’ivseolt, with the consent of tho defendant, the
Western Union Telegraph Company, whereby it was agreed
that tho further experiments under the said agreement be¬
tween the said Company and the said Kdison, should be
prosecuted by the said Kdison and Prescott together ; and
that whatever price should be received from the defendant,
tho Western Union Telegraph Company, for the said in-
That on the Oth day of duly, 137-1, the defend,.:
Prescott, ami the mt\ Mi*>ii, nnulo am iwectitu jt
Ktrument hi writing tluteil that ilay, *wt 0,1 1 ,n 1 c
Exhibit 30.
&ve„il, -That on the 10th day of August, 187-1, the d
feudant Prescott, and the said Kdison, ,,, info ; “*“U|j
the instrument in writing dateil that < a >, - t|
Libit I annex I i thee fl.mt, d .t ' J /'
instrument in writ! menti H *'
IW^hnAlxInWyo « .
nltr Site’s. 1.^00, of Transfers
Patents.
said K l.,on executed iml "-iified - ^ ^ ^ ^
Letters Patent of tho Unit , , f therein spei
men, eleetn ’ 1 “ 1 1 r , t‘ 1 tl t lay '
fied ; which said applications • ^ 0„ M
uo , abered rosi-nutively «, 1S7-1, tl
100 ; ami that o verified an application for L<
said Edison oxeeu ci certain other improv
tors Patent of the United ht tes which sn
— "! "“”3“^ .
■I’l,',“''“|, llubninry, 1870, .to M»» ‘
nml numbered 113 ; and that all of the said him
lions, with the oaths, sfieeilleatinns and drawings
were severally filed in the said Patent Olliee she
their said dates, and were in the several respeoti
set forth in plaintiff's Exhibits li, S and '1'.
Ninth. — That the several inventions specifically
in the said agreements, dated July Dili, 187-1, am
lilili, 187-1, mentioned in the sixth and seventh
of fact herein are respectively the same invention
enlly described in the said several applications n
in the eighth finding of fact herein.
Tenth. — That all and singular the inventions S|
described in the said applications sot forth in tl
finding of lact herein, together with others, were
perfected so as to he practical, by the said Kdiso
defendant, the Western Union Telegraph Comp
under and in pursuance of and after tho malting o
contract with the said the Western Union Tclogn
pnny, mentioned in the second finding of fact I
modified, as stated in the fourth finding ; and m
and not under or in pursuance of certain agreemci
October 1st, 1870, ami April -lilt, 1871, mentione
eighteenth and twentieth finding herein, or either
Eleventh. — That tho defendant, Georgo 11. Preset
and in pursuance of his said contract with said Tl
Edison, dated August It), 187-1, and on account ol
siilernlion thereby payable by him, did, without
lion from tho said Edison, pay all the fees require
upon filing the applications referred to in said a
and in the eighth finding.
Jwcl/Vi. — That tlie defendant, the Western Un
graph Company, paid to the said Thomas A. li
sum of five thousand dollars on the 10th day of L
18i-l, and to tho dufondanl, George 13. Prescott th
1 (iili day of .May, 1871.
'fyhteenth. — Tliat after the 2(!th day of January, lS7fi,
said record in tlio United States Patent. (.Mice of die said
rumen t, dated A ] 'fit -I, 1871, was falsely and f rendu,
.ly, and witliont tlie knowledge or consent of tlie dc.
hurts herein, or of any of them, altered, by addin',' to
li record tlie word “ or ” after tlie words “ antnniatie
grapliv,” and licfore tlio words “ meelianical printers,"
is to conform to and contain die same words as the Ka¬
il marked 11, annexed to the plaintitfs' original and
aided complaint herein, and lefirnd to in the fourth
graph of the said original and amended complaint.
UnetecuHt. — Neither of said instruments of October 1,
0, and April -1, 1871, contemplates or includes any of
inventions or improvements described in any of the
Hendons which are referred to in the eighth finding of
. heroin.
"wentfcth. — That at some time in dm year 1872, and
are die 8th day of February, 1872, and before the malt-
of the agreement between dm defendant, the Western
and had not developed the sain
far that he was conlldent of ultl
Twenty sec«htl — Thai “ the :
telegraphy mentioned in the
between Harrington and I’idis
client e 1 t I r 1 1 t li 1 is I
magnetic " telegraphy.
Tacnly-tiM-— That the invci
finding are inventions in and im;
magnetic svstem of telegraphy, n
improvements upon theeleetro-c
of telegraphy: and that they are
dition or additions to any auto
or to the instruments or machine:
by the said Kdison for the puip
or any other system of automatic
into practical use ; and the sail
any one or more of them, adapt
cessfully or economically devcl
svstem of automatic or fast syste
K'J'ircuty-fiftk — That the mid Western Union Telegraph
■!■] Company had not at the lime of limiting die mid agreement*
U: with said Kdison and witli said Kdison and Prescott, men
‘ tinned ill tlic second and fourth findings herein, or al the
time of paving to said Kdison the said §5,000, set forth in
the twelfth finding herein, or at anv other time before the
23d day of .Inhunry, 1875, any knowledge or notice of the
said instruments or either of them, dated October 1, 1870,
or April -1, 1871, or of the execution thereof by said
Harrington and Kdison, or either of them,
Ticcnti/sixth. — That after the 18th day of .January, 1875,
George Harrington executed and delivered to Jay Gould
the assignment purporting to he dated on the 1st day of
January, 1875, a copy of which is annexed to the com¬
plaint and marked Kxhibit 0, and the said Gould, on the
Mill day of said January, paid to said Harrington §5,000
as the consideration of said assignment; and that on
the ittli day of March, 1875, the said Harrington executed
and delivered to said Gould the instrument of which Kx-
hihit H, annexed to the com plaint, is a copy; both of which
wore recorded in the United States Patent Olliee on the
81st day of March, 1875.
yWy-semif/,.— 1 That the said Thomas A. Kdison did not
at any time ratify or approve the said contracts bearing datu
January 1, 1875, and March Dili, 1875, referred to in the
twenty-sixth finding herein, or either of them.
JwcnUj-eiijhth. That on the -lth day or January, 1875, the
said Kdison executed and delivered to said Gould the
instrument of which Kxhibit K, annexed to the complaint,
s a copy, and the same was recorded in tho said Patent
Jliicc on the oth dav of Jimimrv 1 R7r»
said Mills executed ami delivered to the plaintiff the instru
"lent of which plaintiffs Kxhibit M is a copv, which wa
recorded in said Patent Olliee on said 10th day of Anri]
1875. 1
Thirty-first. — That on the Kith day of January, 1875
the said Jay (build executed ami delivered to the plaintifi
the instrument of which plaintiffs Kxhibit K is a copy
which was recorded in said Patent Olliee on tho 11th day
of April, 1870.
T/iirty-sccoml. — That at tnc several times when tho said
instruments, bearing date on the 1st. 4th. and 10th days
respectively of January, 1875, and March 0th, 1S75, were
executed and delivered to and by said Jay Gould, tho said
Gould know and had notice of the said agreement between
said Kdison and tho said Western Union Telegraph Com¬
pany, set forth in the second finding herein, and of the
modification set forth in the fourth finding heroin, and of the
said agreements between l-ldisou and Prescott, set forth in
tho sixth ami seventh findings herein, and of the perfor¬
mance- of said agreements and payments thereunder, set
forth in tho third, tenth, eleventh and twelfth findings here¬
in, and of the making of said alternative propositions, set
forth in the thirteenth finding of fact herein.
Thirty-third.— That the said Gould procured and accepted
the execution and delivery of the said instrument, dated on
tho 4th day of January, 1875, from the said Kdison, and of
said instruments dated January 1st and March Dili, 1875,
from the said Harrington, and paid the several considerations
therefor, on behalf of and as the agent in fact of the plain¬
tiff herein ami for its use and bcnclit.
Thirly-Jlflh. — That at the several times when tlie said in-
iimonts, bearing date .Unitary lltli and datmtirv l'.ltb,
"ii, were executed and delivered respectively by the said
lls anil tbc said Clnald to the plntiitilf, the plnmlilf knew
1 had aetaal notice of the said agreement between said
ison and the stud Western Union Telegraph Company,
forth in the second Hading of fact herein, and of the
dilieution thereof, set forth in the fourth li tiding of faet
1 of the said agreements between said Kittson and Pros-
t, set forth in the sixth and seventh I ratlines of faet
ein, and of the performance of said agreements and pay-
nts thereunder, sot forth in the third, tenth, eleventh and
dfth findings of laet herein, and of the making of said
trnnlivo propositions, set forth in the thirteenth finding of
t herein.
CONCLUSION'S OK LAW.
'•irst. — That the defendant, the Western Union Tele-
pli Company is a purchaser in good faith and for value
all and singular the inventions described in the said np-
nation, Case No. 00, and of all and singular the inven-
is described in the other applications referred to in the
hth finding of fact herein, without notice of any right,
l’i interest, claim or demand in law or in equity of tlio
itilill herein, or of said George Harrington, or of any
or person, in or to thosntno inventions, or any of thorn.
Srcomf. — That the agreement made between Thomas A.
ison and the defendant, the Western Union Telegraph
nipnny, set forth in the second finding of fact herein,
1 the modification of said agreement set forth in the fourth
ding of fact herein, were and are respectively valid
■eemeats, binding llnoa the Sllhl imrlinu tlinn.t/i nennritinir
/hint. — I hat the recording of san
lfi, 187-1, as set forth in the seventh
was duly made, according to law, o
August, 1ST-1, and such record of
times thereafter to the said Ciould am
the plaintiff, of tlio said assignment
conditions tliuruia contained.
I-'ourth. — ■That the defendant, Georj
chaser in good faith, and for value, i
one half interest in and of all and sin
Scribed in said application, Case OH,
singular tlio other inventions desurib
cations referred to in the eighth find
out notice of any right, title, intorosi
]aw or in equity of tlio plaintiff her
Harrington, or of any other person ot
tlie Western Union Telegraph Comp
inventions, or nay of plain.
J-'ijVt. — That the making and rue
meat of August 11*, 187-1, set forth in
faet herein, vested in the said l’resia
assignees of said Kdison, at the datetl
the inventions described in tlio said a
in all tlio inventions deserihed in l
referred to in tlio eighth finding of f
portions and sahjeet to die terms n
assignment set forth, and subject, a
equitable rights of the defendant,
Telegraph Company, under its agree
second and fourth findings of faet he
Sixth. — That the said record of the
April 4, 1S71, was not notice to the i
#♦ U* pxiytmt wmxL
no title, legal nr equitable, to tlic invention
application, No. till, or in any of the nppli-
il in the eighth finding of faet, or in or to
’(! or to he issued for the same, ontnv of
h said Thomas A. Kdison, under or tiy virtue of
meats of October 1, 1870, ami April -1, 1871, or
licm; nor did any legal or cquiinblo title thereto
1 Jay Gould, nor in the plninliir, the Atlantic and
ilograph Company, under or by virtue of the
(meats to it by said Mills, dated January 11th,
by said Gould, dated January 10th, 1875, or
hem ; nor did any power or authority to convey
uy interest in said inventions and patents, or any
ost in the said Gould under or in virtue of said
I lie defendants, the Western Union Telegraph
nnl George 11. Prescott, are severally entitled to
declaring the rights of the parties to this action,
above set forth, and that the plaintiff, its officers,
servants bo forever rejoined and restrained from
f said applications for belters Patent mentioned
Hi hndmg, or any of them, and from receiving
i ntent upon any of the said applications, or for
inventions therein described, and from selling,
, or incumbering the same in any way, and that the
Ivor to the defendant, the . . it..:.... rn.i.
The plaintiff to succeed must establish :
If. — If the more general terms of that ofl870 are relied <
upon, then, so far as such reliance is requisite to support
the plaintiff's elaiui, it must show that tlint agreement
continued in existence during 1878 and 1874, and that
under that agreement Kdison hail no right ns a partner to
convoy tlio partnership property.
III.— If tlio agreement of 1871 is relied upon tlio plain¬
tiff must sliow, as matter of fact, tlint the present inven¬
tions are within tlio descriptive terms of that instrument
talccn together.
1. It is clear that this instrument was intended to rc-
eito and stato somo foriper agreement, and tlio
wliole instrument is to bo road within tlio limits
44 Seventh. — Tlint the record of snid instrument of April 4,
1871, was not authorized or required by law, mid was not
notice to tho defendants, the Western Union Telegraph
Company and l’roseott, or either of them, of tho contents of
the said instrument or of the faot of such record.
ICii/hllt. — That no titlo, legal or equitable, to tho invention
described in Mill application, No. ill), or in any of tho appli¬
cations mentioned in the eighth finding of fact, or in or to
any patent issued or to be issued for tho same, or any of
them, nor any power to assign or convey any interest
45 therein, vested in said Gcorgo Harrington, either solely or
jointly witli said Thomas A. Edison, under or by virtue of
said instruments of October 1, 1870, and April 4, 1871, or
cither of them; nor did any legal or equitable title thereto
vest in snid Jay Gould, nor in tho plaintiff, tho Atlantic and
Pacific Telegraph Company, under or by virtue of tho
said assignments to it by said Mills, dated January 11th,
1875, and by said Gould, dated January 19th, 1875, or
either of them ; nor did any [lower or authority to convey
or assign any interest in said inventions nnd patents, or any
40 of them, vest in tho snid Gould under or in virtue of said
instruments bearing date January 4, 1875, and January 1st
nnd March 9, 1875, or any of thorn.
Ninth. — Tho defendants, tho Western Union Telegraph
Company nnd George 15. Prescott, are severally entitled to
judgment declaring tho rights of tho parties to this action,
ns is hereinabove se't forth, nnd that tho plaintiff, its officers,
agents and servants ho forever rejoined and restrained from
prosecuting said applications for Letters Patent mentioned
47 hi the eighth finding, or any of them, and from receiving
any Letters Patent upon any of the said applications, or for
any of the inventions therein described, and from selling,
disposing of, or incumbering the same in any way, and that tho
plaintiff deliver to the defendant, tho Western Union Telo-
graph Company, tho said Letters Patent, No. 102,833,
and assign, transfer and set over in writing all its right,
title and interest therein or to the same, and in or to the in¬
vention therein described, with the costs of this action.
p. §J. (ffinmti
Tiie Ati, antic and Pacific
Teleguafh Co. i
I Brief Suggestions of i
George B. Prescott cl al
Tho plaintiff to sticccoil must establish :
I —That the inventions in question nro of like description
with those contemplated by the terms of the agreement of
1870 nnd 1871.
II. — If tho more general terms of that of 1870 aro relied 2
upon, then, so fur ns such reliance is requisite to support
the plaintiff's claim, it must show that that agreement
continued in existence during 1873 nnd 1S74, and that
under that agreement Edison lmd 110 right ns a partner to
convoy tho partnership property.
III. — If tho agreement of 1871 is relied upon the plain¬
tiff must show, ns matter of fact, tlint tho present inven¬
tions nro within tho descriptive terms of that instrument
taken together.
t, It is clear that this instrument was intended to re¬
cite and stato soino foripor agreement, and tho B
wholo instrument is to be rend within tho limits
of that agreement ns thus recited, to wit, the prin¬
cipal agreement being to invent Improvements in
“fnst” telegraphy, tho conveying clause enn bo
hold (in enso tho lnngungo is doubtful) to tnko
effect only upon things relating to “fast” telo-
5. Proof tlmt Orton nt sonio time snw tho certain notico
addressed to Clio “ W. U. Oo., or whom it may
concern,” nml tho hill of complaint in tho case of ®
Craig vs. Harrington.
(1 Vote _ The points of objeution to tlioso efforts to bring
homo notico are) :
n. Tlmt tho agreement of 1871 is not shown in
proof to lnivo taken effect upon any invention
nlrciuty so completed as to bo the subject of
assignment.
a'. Tlmt it cortninly is a morely executory io
contract, so far as the inventions in ques¬
tion are concerned, and that therefore it
was not required to bo recorded, and tlmt
record is not notice of its contents.
a*. That oven if actual notico is brought
homo to tho defendants, tho contents of
tho paper are such as to satisfy the reader
that the former agreement, whatever it
was, 1ms been already executed, except so
far as its continual execution is provided 11
for by tlmt instrument, and that no pru¬
dent person would lie led to inquire
farther after reading it.
a3. Actual knowledge or tho agreement of
1870 would only lmvo informed tho
tho reader of a partnership, in which
greomont.of 1871, it is eh«
aiiitirt' lias boon put to i
uiiuity to invent new eoi
liilo (lie trial lias been coir
tbe (pnnlrnplex anil ilnpli
’ elieinieai anlonmtie: it m
'sable that otlier renders i
4s. EoilV know at tho time that Edison Imtl
' been for more than a year experimenting
on tho W. TJ. line, witli tile view of im¬
proving its own duplex, and inventing
others for its purposes,
&3. There is nothing to show that Orton at
Unit time knew anything of tho nlloged
prior relations between Edison and liar-
ringtoii.
Tims ono party to tho Interview was fall
of knowledge and under the strongest obli-
■nontioncrt, in tl.o presence of Edison, (|10
P olmblo cxpla nation is tlmt Edison had
nlready snul t» 1> c ott tl t the o s
agree'neat between hint and Harrington, re-
Jn ’ rVer’ nll,y ‘o automatic. This will
suniue.illj account for the simultaneous an-
if there"?, 1CMOflrf 1,oi,lS°» l'hmdiff,
it tl.ero \< as anything more in Prescott's
riK thp" t"is-itw,ls for «'« pliiintift*
all contra . v r°SI’0tt! l,,ls 0,l,i*'L‘l.v displaced
i"(1L0‘nne 'l showing Unit ho
nrohahi Lr 0,1I< °f t,lut agroeinont. The
was nd ? U,XI)l!lm",0M i8' llo'™'-or, that Scrrcll
ter'vio s onTl "* ,lnt<!' ani1 tlmt "10
Jaana v L ? *" ??°‘ ‘° "rWoh 1,0 «*■» in
the onlv'nm.u ,i° " 1 1’roscott swears, arc
If Serrnll S '°J CVOr 1111,1 011 this Sldlject.
1 St'1,c11 was correct, why did thev not 1
i H ,ft °ne . k ‘1'olr subpienn.
tlie ‘state oVth°"p T™"* !*«*» of
-tfsras? rs,rr' r
1 L 1 10 el n r Lto r ! Ill0llV0
Prescott ng, cement. of «"• Mhon and
•iwarsT-nr*-
tlio reader any idoa tlmt it was intended to 24
rolnto to inventions or patents belonging to
Edison and Prescott.
It is expressly limited to patents in which
George Harrington and Edison have an in-
tcrest, which patents shall have been issued to
Thomas A. Edison. Thus itnppcnrs to affect
only patents then issued in which Edison and
Harrington Imvo a known or admitted joint
interest.
If wo know before of tho joint interest of
Edison and Harrington, then this last notico 26
is not needed ; if wo did not know of this be¬
fore, then wo had no means of making tho
notico intolligiblo to us as notico affecting tho
Edison and Prescott patents.
f. Tho equitable titles nro equal in merit, granting
for the moment that an equitable title equal
in merit to ours did at some timo exist in
Harrington ; still, tho legal title having been
perfected in Prescott first, after tho actual „„
creation of tho thing, notico to him must bo 1 ’
of tho clearest and strongest character.
This ordinary obligation is greatly en¬
hanced by tho fact that tho othor claim¬
ant had full knowledge of wlmt Edison
was doing, and had tho means of secu¬
ring all its rights by explicit notico to
him j a notico which was not less necessary
for its own protection, than required by
its conscience to an innocent purchaser, 27
about, according to its own theory, to bo
inveigled into an invalid contract.
p. As to tho Western Union, tho samo obliga¬
tion rested upon Harrington, lloiff should
not have satisfied himself with any minc¬
ing, half expressed ambiguous notice, but
should have said in plain torms, “tho
qundriiplox and duplex are claimed by
Harrington, by virtue ofnn agreement in
vmtmff, wind, is nfc your service if you
notice"’ etc *' Y°" Wi"’ tlleror°ro» tiiko
VI — The plaintiff must stand i„ court ,
mis. mid must nhhii,. • , 1 cou,t Wlt» dean
tlio rules of conscience * fe'l,,c,,t *n subordination
onwiel O tlcco.n L' t° ,U' °f .««
o obi, el In tic U L,,nJ,,!li'„1:t7S "'i“' 11
.'"“ft ^ oblige,! to sustain that tUlo ,"',;°,/soionti°1's
legal rights (miscalled equitable) which ?mi • 1 ,,88crt,(m
1,0,1 tluw'*l' fi'oso inequitable ieee'llugs 58 “ 1,1,8
‘ajSSSSasas
fin
l-'csuIentoftleco VV °L Ul“‘ ' « the
2; ilItorost
Gould, buying fU|i notice of h "S ? ,recor,,> and
1, while
copy of tl,o record
original in court.
A strong cIVort was land,
make the plaintiff bring :
ness, but, notwithstanding t
tlio evidence now dourly six
agreement, and probably r
part of January. Thus tli
withheld lion, record, and
Mr. George Harrington a,
pern, died, will, oat n part,
appear as coulestants in
and lead the defendants i
useless, and futile, and n,o
lion, II, ere only to diseov,
they have been amused l
and Unit the real title is
plaintiff.
VII.— By a most audacious trick, inv
tion by Mr. Itcilfof the unauthorized pr
Sorrell's unnio as attorney, the valuable
veatioa is slipped out from under the l’i
and the patent issued therefor to Ilnrri
and by them convoyed to tlio A. and P.
decision of the Commissioner of Patents that the patents
monts; and lie wns known •
"isr^r
sosscd-ncnpacitX " J ,, T"mmr wl,tol' ^ !*■■
mimilo could herein and 11 !nn,‘T of words n
°Ve,r si"Klo"ire of
6 bo relieved from the clniw nf 1^ c.n?lInftllc wire could
,“™sr3sf^£S,r"“”
purpose of performing rnptdly ' w^h^sm ";iiC,hinG for ll‘°
h called IS::]-, 1,0 bad ”'9° invented
inatnnt relief of tlio lino from il. ’ . I,av,,'g for its object the
to 6ivo to the wto A™^^orol“toiolty,*on.
r«l % as tbo tru, „ u ° ^ * 00 '°y U°h = m,“ "9
6 require it. These inventions of I ;! "S Wmlus could
complisl, the object, „„d Ed s° „ u £ (ho*0™*1. «Hd not ac-
5= .» — ■ ■*»
8oncw0reainioa"o°m^1Illt^^.U''rrr''‘etO'‘ »»il Edi-
l}\°y fom>cd n partnership “ ng ^.?!r°k?r lst' 187«. bjr which
turors of all kinds of machinery ” n"d nS "'Kliuf“c-
,, ?r> "tutorials, and all and whaLocl i"”0".'8' t0°ls' bttt‘
tl>o various systems of telegraphy » 7 be rcc'uireJ by
7 The business of tbc firm was to bo on i
name and stylo of the American "du,0tcd l">dcr the
tho place of manufacture was H»« n- '0®ra^ 1 Works,” and
capital of the firm was nine thousand N?ark' Tho
son was to furnish three thousand dollar ™ ’ °f "'llioh Edi-
owned by him, and Darring on was to ^
dollars cash. It wni ° T*' S‘* lll°»““»d
the control and direction o[ the mnnii'r 3fdi,on “shall have
ploy and dismiss all workmen n i ,ry’ nml shall om-
tho interest of the firm,” and’ that Vr '" ! <,0Cm bost for
manage tho finances. 'nt Hll|rington should
Edison's obligations to the Gold nml Stock Company
were recognized in this contract ; and it was provided that
Harrington should have no part in tho inventions which
Edison wns making for that company ; but Harrington
bound Edison “not to invent undor said contract any nia-
“ohinory that will militate wjaimt automatic telojruphy, nor
11 to soli, transfer, or convoy to any parties whatever, with-
"out lus consent, any invention or improvement that may
“be useful or desired in automatic telegraphy and it was
provided that Edison should be paid 11 a reasonable and
"proper compensation " out of tho property of tho firm, for
any inventions which ho might make, " other than such ns
"may bo suggested or arise from tho current work in tho
"manufactory, suoli payment to bo in addition to and irre-
"speetive of tho proportionate part of tho profits of the
"business of the firm to which Edison would bo otherwise
"entitled," and in ease of disagreement, arbitrators wore to
fix the price.
The expectation under which that contract was made is
stated by Jicitf (P. fob 2,272). They supposed the “ Little
" automatic system would be very soon and very generally
"put in use, and that(thisshop) would be needed for equip-
" ping lines throughout the country." This hope was des¬
tined to disappointment, and tho whole system utterly
failed and has been practically abandoned ; but tho objects
and views of the parties at the time explain their subsequent
conduct when it became manifest that no lines were to be
"equipped throughout the country " with aittu natie iustru-
This contract was to last for live years ; but, basin . -s. not
coming to thoshop, on the lth of April, LST L, tire sum; par¬
ties made another agreement, in which it is stated that Edison
"did stipulate and agree to invent and construct for the said
" Harrington full nml complete s its of instruments mi l mu-
“chicory that should successfully ami economically develop
1(i,lto practical use the Little or other system of automatic
or fast system of telegraphy," ami that the said Harring¬
ton had “faithfully fulfilled all of the covenants and stipu
“lions entered into by him." This agreement then pro-
Moded to convey to said Harrington two thirds of all the
said inventions, including therein all my inventions lor
20 piocccdcd to experiment with his combinations upon tho
®f., /a' oslori1 Union Wosniph Com], any, ami about
the 4th of April, 1873, he had made a variety of duplex
combinations, and had applied to the Patent Office for ton
patents, which applications are known as “ Oases A to 11 >>
Among these was that application culled “Case 11," which
was developed from the sketch called " Duplex No. 10 ’’ in
deftndant s Exhibit 0, which is tho book of sketches, dated
F bruary lu,1873 , whioll E(}isoil ox,libitflI, ,’0
Orton at tho tune their contract was made.
21 1,1 Jv No1 b0,01^ of.skolollcs llloro u one entitled “ K„ur-
I - o. 14, and the interrogatory “ wliv not V” ;u
upon it in Mr. Edison’s handwriting. Thi^vasa ™
Uo" of,th0 <lU!|druplex at that time; but it not S'.
r( 'fi|rSl0°rfd-1Ua,,rU,),UX controversy in this
ssffrr
modilioations or the contra], lex telegraph
.
sraas acarrr*
appoiutod Norm nn n \r:n . . c 1,1 ll,s abac nee, he
oil' his experiments, and no patan ^ wore''?8 ? Vn ‘ Vi''S
Patent OfHco on his annlhJi ! , V?ro 18311011 the
28 applications, however, were objected" to I |3Un°°' Tbu
various reasons, and IheTnost i Sm . 7 ^ °"ico for
rejected twice (,,. fob n84.5) 1 , 0110 (°"3° H) was
lidison returned from Europe in June'Ws A r, , -
111111 1,0 complained to .Mr, Orton that thn ,Af "3 ru'
company had not shown so muni • • 0"1l)lod'0°a of tho
wuh him as ll0 desired, „„d Mr oiT7°" ‘° U0ol101,lto
ff1'1 Ve3COlt’ 1,10 electrician of tlm oo,n 0''OUp0" 80,11 for
lum to make it part of Ids d„t„ ,|)any' n,uI ordered
“ 11,1 1,10 facilities and nssistanccfthatT ‘ ^ &li8011 1,0,1
nee tlmt he required." There¬
upon Mr. Prescott gave Mr. Edison a speoin! room in tho 24
Telegraph Company's building, and ho continued thero his
experiments during that year, reporting from time to time to
Mr. Orton (l’.fols. 489 and 495; fol. 181(1; 1). Ibl. 1443).
In the winter of 1878-74 Edison had an experimental
combination of the duplex arrangement — which is shown in
Case 99 — in his shop nt Ncwnrk, where he exhibited it to
Cion. Eckert, Mr. Chandler and Mr. Drown, all ollicers of this
Western Union Telegraph Company, and to Hoi 111 The
combination was made of apparatus constructed lor the pur¬
pose in the W. U. shop (1). fol. 970). 25
On tho 19th of May, 1874, Edison wrote his letter
(Deft’s Ex. 14) to George D. l’reseott, explaining that Mr.
Orton’s visit to Europe had interfered with the prosecution
of his experiments, and proposing that Prescott should give
him "facilities and personal help," and become jointly
interested with him in the patents and proceeds (Ex. 14).
This proposition to Mr. Prescott was held under considera¬
tion by him until tho return of Mr. Orton from Europe, in
May, when it was submitted to Mr. Orton for his decision
whether Mr. Prescott should accopt ii. Mr. Orton explained 29
to Mr. Prescott exactly wlmt his contract was with Edison,
and consented that Mr. Prescott might make the arrange¬
ment that Edison proposed (fols. 525 to 589). Thereupon
Mr. Prescott gave notice of acceptance to Mr. Edison, and on
the 21st of June, 1874, Mr. Edison wrote the memorandum
of agreement (Deft’s Ex. 44) to express a contract such as he
then desired to make. This draft of agreement was not en¬
tirely satisfactory (D. f. 1808), and on the 9th of July a formal
contract between Prescott and Edison was executed (Dell’s
Ex. 80.) Meanwhile Edison and Prescott wore prosecuting 27
their experiments, and on the same day when this contract
was executed between them some experiments were tried
in the Western Union Company’s building, in the presence
of a reporter of the Times newspapor, tending to show the
feasibility of the duplex such as is described in Case 99.
Tho experiment seems to have been very encouraging, and
a published account of it appeared in the A’ei o York 'limes
of the 10 th of July.
After this time specilicntions wore prepared for tho pro-
28 posed patents, which appear in this case under the numbors
84 to 100, and 111 and 118 ; and it became necessary to pro-
paro the applications, and determine the form in which theso
patents should issue. Thereupon the question arose,
whether Mr. Prescott should appear ns a joint inventor or
ns an assignee of one half; and upon tlmt question ho sub¬
mitted to the opinion of Mr. Sorrell, the patent agent, who
was to apply for the patents, and who advised him that, in
lnw, his services in developing theso inventions would not
constitute him a “joint inventor.” Thereupon the contract
20 of July 0th was altered, nnd the contract of the 19th of
August, 1874, was substituted for it, which contract speci¬
fies the applications about to bo made, and assigns one half
of tho " inventions" to Mr. Prescott (D. f. 1811).
Exporimonts wore still contmuod, nnd tho applications
wore purposely loft ponding in tho Pntont Ofiiee, in order
that tho result of further experiments might ho ascertained
before tho patents issued (1) fol. 64(1); and on the 80th of
September, 1874, tho invention in Ouse 09 was so far com-
ploted as that it was sot in operation hutwocn Poston nnd
80 Now York. This proving successful, Mr. Edison, on the
10th of October, solicited from Mr. Orton and obtained an
order upon tho shop of tho company to manufacture six
sets of these instruments (Exhibit 21), which wero to be
matlo with all possiblo speod ; nnd one sot of them was ap¬
plied to tho Buffalo lino in November, and worked satis-
fiiotorily, lho sy.-tem was then extended to Chicago •
whereupon Edison applied to Mr. Orton for some money
reporting tho fiict that the Chicago line had worked on rogii-
S1 i::.br::,(Ef,ibit,No-2;i)- t!“°
31 wldcl n 10,11 11tW0 tll0Usand t0 1011 thousand dollars,
.J 1J, r' 0rlol‘ would to advance." Mr. Orton
selected the sum of hvo thousand, which Edison said was
satisfactory, and it was paid to him, for which ho nave
he receipt dated December 10, 1874 (Exhibit 22), whereby
[ilex instruments, in his own shop, representing that hi
shop was in want of work, nnd asking it as n favor. Mi
Orton gave him the order, and offered to arrange for pay
incut as tlio work progressed, which Edison declined, sayinj
that Mr. Orton’s order would give him all tho credit h
needed, and ho did not wish for the money until tho worl
was completed (Exhibit No. 28, fol. 1007).
The time had now arrived when tho inventions in ques
don wore practically operative, and when the parties won
in a condition to intelligently fix the compensation. There
upon, on the lfitli of December, Edison and Prescott Hindi
their proposition to take one twentieth of the average cos
of inniiitonaiice of fifty thousand miles of wire for sovonteci
years — one third down and the balance in yearly payment
(Ex. 27). This proposition wins received by Mr. Orton will
a request to make it more definite, which was done by tin
parties, who submitted some figures. It, however, was noi
accepted, and immediately afterward Edison submitted twr
other alternative propositions (Ex. 20), Prescott having said
to him that ho would be satisfied with any proposition which
would bo nccopUiblo to him (D. fol. 144S). One of these
two alternative propositions was for fifty thousand dollars
and a royalty of one hundred and sixty-six dollars a yeai
for each circuit; the other was for twenty-five thousand
dollars, and two hundred and thirty-three dollars a year for
each circuit.
In reply to these propositions Mr. Orton said that tlioy
agreed very nearly with his own views, and that he was
going away for a few days to Chicago, and upon his return
lie would “take this up, put it into shape and execute it."
(D. fol. 670). Mr Orton left for Chicago on the 80lh or 31st
'lay of December, 1874, and returned on tho Uth of Janu-
ary following; and on tho 19th January ho accepted the
second of the alternative propositions of Edison, which was
«« letter of :cce,. lance in hi. hands for Some days), end „0fi
ing them tlmt “nil further negotiations between (the
must mammh, cense." This letter was mailed in N,
the W Tl i0Sl"'n,rkr<1 *■«}»’)• *>. «nd received that day
n m .U' C^’ m“ " c°l’y b>’ Wr- Prescott (Ex. .1), and
eonst, utes wlml » called in the complaint the ".eseissi
ot snid eontrnct with Prescott."
relied MM- ‘W of *«■**, 1875, Ed is,
released all Ins rights under his contract with 1 Wott a,
87 £S;
JA1 00U,‘I> A*» THOMAS T. ECKEHT.
tlje time when Edison was prosecuting his expel
.eats and performing his eontrnct with the Western TJnic
°, , 5)' ,In t!‘° ]l>“er part of December 1874 after
immm
aHsMfpai
» tea » »”.«=';»
had eontrnoted to' assign to tlm W 'io1' 1)0 niul Prescott
Edison told Jay Gould dl the iho^^IhSh5i,np,,,V-
i do,inT whh* * «k?
relations with that comma ?’’ T'‘ oxl’lain«d all of his
thereupon 4 ^ l,#d bc™ done, and
“of the other parties.” (Fob 1,087-80, 1,205-6.) M>son
leeepted tho thirty tliousand dollars, wluoh was paid him,
md lie executed tho powor of attorney to Jay Gould, dated
January 4, 1875, undor which a title is claimed through
Gould by tho A. and P. Co., to the inventions which are
the subjects of this suit. At that time, and in that trails-
action, Jay Gould made no pretence that lie was acting
under any rights derived from Harrington. Ho merely
proposed to buy whatever rights Edison had (fob 1,080).
Afterwards another paper was executed bot..cu. Har¬
rington and Jay Gould, which hears date January 1st, 187o,
tho truo date or which, howovor, was later. 'J nc [ l itnlill
refused to produce any witness to tho execution of that
paper for examination, but relied upon an acknowledgment
inado in Maryland, in which tho subscribing witness did
not state that the paper was executed at tho time it boro date.
Edison, however, proves that after he executed his agree¬
ment of thu 4th of January Jay Gould tol l him an arrange-
uiont would bo made with Mr. Harrington (P. f. 107). hoi
that contract Jay Gould paid Harrington five thousand on
tho 14th day of January, as the plaintiff proves i (1. fob
1 GM) Afterwards, nud on tho 9th of March, 1876, Hnr
riiiirton executed auother assignment to Jay Gould substan¬
tially the same as that bearing date January 1st ; and on
the 19th of July, 1875, Jay Gould conveyed to tho phut-
till* all the right, title and intorost that had been convoyed
to him by Harrington (Ex. 1C). On the 8th of January
1875 Jay Gould, claiming to act as attorney in fact, oi
Edison under his agreement of the 4th of January, «B3igno<
the patents in controversy in this suit to Samuel M. Mill:
(Ex. Ij), and on tho 11th of Jauuary Mills assigned the sain
to the plnintitV (Ex. M).
DECISION OF PATENT OFFICE.
Upon this stato of facts tho plaintiff attomptod to proout
4-1 1874, and ordered tlio nnionis i •
whereupon an ex 0 bo '•lfsll0ll accordingly •
Plaint filed in t", c! , " T'W "'ns on „ con,.’
Western Union Company fi^cSTd’ K,'iS°”' "nd '«*
U.'° P,,tem Mice according to a • ? I0SU ',ntcms f'°>»
8l?"°r of Paten, S| and Irom em.ST'' "'C C° *"*■'
suit was brought. ® Ulem a and this
I’MSAWxog.
and tl'o excenion o^tho vari'ous'co ^nl'0,w at' tl.o parties
attorney, (,\ Ct ,i10 Tr ,oP l*‘e execution ofsucli nou-nr , r
“sPf! 4‘h- 1871), wln-elMva^,'',]""'! Ediso". agreement of
„ f T P"leilt Ofiiee, May «,h 871 I w 11,0
“? ‘Ins plaintiff is informed „’„ n 0 Kdison,
;; Ins mind ,|10 process „ ] bc 10VC8- had arranged in
and nao1 o0- embodied „ “ ' 0 ^"atifn powens
■nentwned, and find develonod ,t 1 P °"s lloreinafter
„ o°n8dcnt of the „ltimnle ’« l,'0»> «> far that h0 lvns
"Hn T* ^'POfitnonls with"; " fU'*l,0(1 »>»■ invest, '-
..^JOtnpped and furnished £ ^
^i'is 1S the said
■STSW^-isrer
1 "as executed under the advice ’
18
11 of the counsel for said Prescott, who was also the counsel 48
" for the 'Western Union Telegraph Company, that the agree-
11 input aforesaid between him and said Harrington did not
“ include duplex ami qundruplox telegraphy. The said liar-
“rington was then absent, and the said Edison was misled by
"such erroneous advice into executing the said agreement
“ between him and Prescott. It was made without any vain-
11 able consideration whatever, and the said Prescott has not,
“ nor has any one paid to said Edison any money or other
11 value whatever on account thereof. The same was made
"on the faith of promises made by said Prescott that ho 40
“ would assist tho said Edison to develop the said inventions,
"and introduce tho same, and soil tho samo for a sum or price
"in somo degree commcnsurnto with tlioir value, ami also
“ upon tlio terms and conditions in said agreement sot forth.
" lint the said Prescott, who was then and lias over since
" been electrician of tho Western Union Tolograph Com-
» pany, did not in good faitli carry out and perform tho said
" promises, terms and conditions, but fraudulently, and with
“ the intent ami design to benefit his employer, tlio Western
“Union Telegraph Company, to tlio dotrimont and injury of 5o
"tlio said Edison ami to compel him to join with said Pres-
“ eott in executing a convcyimco to tlio said Company for a
"small and totally inadequate consideration, did wilfully
" violnto the said promises, terms and conditions in tho fol-
“ lowing particulars :
" 1. Ho did not furnish tho said Edison any money or
"assistance of any kind in and about dovoloping the said in¬
i' volitions, and introducing and soiling tho samo oxccpt as
" hereinafter stated. 51
"2. He did pay tho fees required by law upon filing tlio
"said applications, ami did, in tho fall of 1874, assist tlio said
“ Edison to obtain tlio use of some of tho wiros and machinery
"of the W stern Union Tolograph Company for tho pur-
"pose of experimenting with tho said inventions and ini-
" provomonts ; but ns soon ns tho machines embodying tho
11 sumo proved successful, ho allowed and undertook to license
» tlio Western Union Telegraph Company without tho con-
f>2 “* Hont of Hiild Edison to uso the samo, and thoy lmvo over
“since been used by said Company to its groat profit and
1 advantage, without the payment of any consideration what*
ever to the said Edison, and without his consent.
“3. When the said Edison, in the fail of 187*1, was, with
" the knowledge mid consent of Prescott, negotiating
with the said last inoniioiiotl Company for the sale to it of
„T improvements ami inventions described in sai.l appli-
"cations, tlie said Prescott did not promote nor assist in said
53 “ negotiations, but on the contrary thereof, combined with
t the President of said Company, who was acting on its be-
"lndf, to refuse to make any definite oiler to said Edison
“and to continually postpone the decision upon said no-o’
" tmtlons> 111 tllu liopo that lie would bo induced by the pres-
"sure of want to soil said inventions for a nominal price. ’
“i The said Company orderol of said Edison (with the
Knowledge and consent of said Prescott) twenty of the ma*
"chinos embodying the said improvements, and advanced
54 lmn fivo thousand dollars to aid him in constructing the
, a,mc> and promise, 1 to complete tho said negotiations
S° “S t°1?!'t bim in r'lmls for ‘bat purpose. The
.said Edison spent all of said monoy and incurred liabilities
^1°"'" T"°, t0 11,0 “tont of 3l!Von thousand dollars
inore fot work, labor and materials in and about construct,
mg the said machines. He had no furthereapital to exiiend
„ 111)011 f 10 anmo' or 10 l’a>’ 1,10 workmen ongaged in their eon
“ rnir-t1 i.nst ,,,ontio'i°'1 °w,w. w.
ingtho diets horembeforo averred, and with the approval
65 °°nn,vanco of 8511,1 Prescott, refused to pay the said
"tio is in"^"’0^ nild “"‘iauaHy postponed aid negotia-
, *n 11,0 °M 001 u>o and belief tlmt be wotdd be
thereby compelled to accede to terms for the sale of said
"improvements much below their real value.
«1* 2° PrT0tt ,llns f,»-tl>or violated the 8,lil|
pi onuses, teims and oonditions, by oonsontimr m i
forming the said last mentioned Co“ ° J
5 rootle , inch, e embodying the said improvement
“ nnd assisted and directed in ami about the said manufacture!
“ and the said Company 1ms actually manufactured, or caused
“ to be manufactured, many machines embodying the said
" improvements, and is now using the same without the con-
“ sent of said Edison, and without paying him any compcnsa-
“tion therefor, and to the great profit and advantage of said
“ Company.
fi. — Sixteenth.—" The defendants, Prescott and the West-
" era Union Telegraph Company, bad notice prior to July 1,
" 1874, of the agreements nforosnid between said Harrington
“ nnd the defendant, Edison. The Inst 'mentioned Company
“now claims to bo tho owner of the inventions nnd improve-
"ments mentioned in said applications, by virtue of some
“ alleged agreement between itself and the said Prescott nnd
“ Edison, the precise nature of which is unknown to this
“ plaintiff. Hut tlie said Company never closed or oonsum-
“ mated the said alleged agreement until niter tho said ngrcc-
“mont with said Prescott was rescinded ns aforesaid, not
“ until after tlie said instruments marked G nnd If wore filed
" in tlie United States Patent Office, nor was the snmo made
“ with tlie consent of tho said Harrington, or tho said Gould
“or this plaiiitilf, nor did this plaintifV know or suspect tho
“same until after tho first day of February, 1870 ; and this
“plaintiff is informed and believes, that neither said Gould
“ nor said Harrington knew of tlie same until after said last
“ mentioned day."
This complaint was sworn to by Thomas T. Eokort, who
lind a personal knowledge of Edison’s relations with the
Western Union Company ; who assisted Jay Gould in
procuring Edison to convoy to him in violation of tlie
rights of tho Western Union Company ; who was present
whon Edison told Jav Gould what his relations witli tho
Western Union Company were, and whon Ellison showed
Jay Gould a copy of tho receipt for fivo thousand dollars
which had been paid him by tho Western Union Company ;
and who therefore know the falsity of enoli and all of those
statements. Ami not only did lie know it, but lie lias not
60 attempted to prove the truth o|' any one of them, excepting
in the feeblest way to prove some sort of accidental notice
to tho Western Union Company of the existence of tho con¬
tracts tolwccn Harrington and Edison :
First. Edison was asked tho question when lie had “ ar-
“ ranged in his mind the process, means and combination
" which are embodied in the application for Case .00;” and he
answered "Between the middle of 1872 and 1878, and then
I am not certain” (fol. 814), and being pressed by tho plain-
till' still adhered to it, that it was some lime in 1872 (fol.
61 868). It is certain that Edison bad not made that arrange¬
ment oven ns early ns 1872; because when he presonted to
Mr. Orton his book of sketches, February 16, 1878, (Deft’s
Ex. 9), it did not contain any combination which could bo
used in n qnndruplox, although it did contain No. 14,
which was q suggestion of a quadrnplex, but upon a differ-
cut principle (fol. 904). No. 10 of those sketches, howovor,
is tho foundation of Caso H ; and it exhibits for tho iirst time
the modo of operation in which reversed ourronts work
one relay, and increased and diminished ourronts work
fl2 another independent relay on tho snmo lino, which is
the characteristic principle of Caso If and Case 99 •
but in the skotch No. 10, ns constructed, that principle was
applicable only to a duplex working from opposite
directions, nnd could not by any possibility bo used
for a quadruples without a complete change in its elements
and without leaving out of it one of tho two neutral relays’
wh'ch m combination constituted tho peculiarity of that ar¬
rangement, and which were made and intended for the pur¬
pose or preventing tho mutilation of the signal at tho timo
63 of reversal when there is no current on tho lino, but which
The last statement in this fifth paragraph is that Edison
pursued his investigations and experiments with the assist-
a.,00 of Harrington with energy and industry in a shop in
Newark equipped and furnished at said Harrington's ox-
E''i„v rfUCt iS ll"lt "0nC °rthu oxl)or‘n.e„ts relating ‘to
j no wont into partnership with Murray in another place, 64
and Eckert, in the winter of 1873, was shown those oxperi-
I ments at that now shop, nnd the apparatus with which the
i exhibition was made was that which had boon manufactured
J at the 'Westorn Union shop in 1873. (P. fol. 976).
■ i Second— Edison never "ratified and approved" tho con-
i tracts of George Harrington of the 1st of January and 9th
, of March, 1875. Ho was asked that very question and do-
. nied it (p. fol. 110(1).
Edison was asked tho question by the plaintiff whether
the qnndruplox system of telegraphy was a " fast " systom for 66
] the purpose of proving by him this allegation of the com-
•\ plaint; but lie did not respond favorably and was dropped
(p. fol. 839).
I Afterwards lie testified that tho word "fast" was " invented
| and applied by D. II. Craig, nnd persistently kept boforo the
1 public to designate automatic telegraphy, in contradistinction
■! to Morse " (fol. 1048), and in reply to a question from tho
; j Court bo said that ho did not know of any other systom
1 than the automatic to which tho word fast was applied in
1871 (fol. 1126). So familiar was tho application of tho 66
: 1 word fast to tho automatic or chemical system, that on ovory
3 side it appears in common use. Tho Postmnstor-Goncral
’ used it in bis report' of 1878, and Mr. Orton in his letter re¬
plying to that report uses it (P. Ex. E 5, fol. 7), and no wit¬
ness has been called, except Edison, who did not respond,
to prove that tho word " fast" over had any application to
! anything but tho automatic systom.
■1 Third.--' Tho fourteenth paragraph of the complaint is a
- complicated tissuo of false statements :
i 1. It is not true that l'rcscoll’s counsel ndvised that tho 67
! Edison and Harrington ngreomont " did includo duplex and
J quadrnplex telegraphy," or that tho agreement botween
;■ Edison nnd Prescott was executed under any suoli advice,
j 2. It is not true that Harrington was absent wlion
J the agreement between Edison and Prescott was made, or
1 that Edison was misled by any erroneous advice into oxo-
;! outing tho said ngreomont.
< 8. It is not true that " that ngreomont was mado without
':J ■■ a„y valuablo consideration whatever, nnd that said Prescott
June 21, 187-1 (Heft’s I3x. 41), which was put into more
formnl shape on tlie Oth of July liy Mr. Soron. Prescott
rendered Iris own services in developing this invention, and
paid tire fees for tiie patents according to his contract, which
tlie complaint itself' admits, and which both Edison and
Prescott proved.
Harrington was not absent front tlie country at the time,
but was daily tit his ofliee in New York, where he was told
by Edison of all that Edison was doing, and ho saw Edison
almost every day (fob 1824 to 1820). Edison proved in direct
examination that Harrington knew of Itis making that
contract at tlie time it was made (p. fol. Sol), and lie never
asked Harrington's consent, and Harrington did not object
(fol. 1057-G8). When Edison received thirty thousand
dollars front Jay Gould— of which twenty thousand belonged
to Harrington, if (hero is any truth in tlio pretence that
Harrington's contract covered duplox and qundruplex—
Harrington never made any demand upon Edison for any
portion of it, although ho sold Itis release to Jay Gould lor
live thousand dollars, covering the same subject matter lor
which Edison had received thirty thousand dollars.
4. It is not true that Prescott “ fraudulently and witli tlie
'intent and design to benefit Itis employer, the Western
• Union Company, to the detriment anti injury of the said
1 Edison, ami to compel hint to join with the said
' Prescott tit executing a conveyance to tlio said com-
pany for a small and totally inadequate consideration
' l° violate the said promise, terms and conditions
of ins contract. Tito proof is, that Kdison nindo tlio tonus
a ins own satisfaction, ami that Prescott never interfered
nth hint, but was content with wlmt Kdison himself was
'tiling to take (D. fob 1448). Thu pretence that Prescott has
censed lltu Wi.at,,,-,, IT,,!,,.. n.._ . . .
did all that ho could to introduce tlie systorn into use ueiore
the 1st of January, 1875; and since that time the Western
Union has asked no one's permission to use it
Prescott, however, is injured by tlie procoodiugs in this
case, under which tlio invention is open to present public
use ; because lie cannot bo paid under his contract with tlie
Western Union until there is a palont, and perhaps there
never will be a patent, in which enso lie will have lost his
labor and outlay.
The prctonce that Prescott induced tlie company to post¬
pone tlie acceptance of tlio oilers of sale is equally absurd.
The first oiler that was made was signed by Prescott and
Edison, and was dated the 10th of December, and on tlio
80th of December Mr. Orton left town on business. In tlie
interval tlie negotiation between tlie parties had progressed
to tlio point at which there was a substantial agroemont, an I
immediately after Mr. Orton's return oiooftlie propositions
of the parties was acceptod. In the meantime Edison had
everything lie asked, and was ollbred money on account of
tlio twenty sets of instruments, and declined it.
Tlie statement in tlio fourth subdivision of the fourteenth
paragraph is particularly false and vicious. The live thou¬
sand dollars payment referred to in that paragraph was not
made on account of tlio twenty sets of instruments, but win
paid ten ilai/s before the order for tlioso instruments was
given, and was a liberal advance by tlio Western Union to
Edison on account of tlio patents which were expected to
issuo. At that time no patents wore issued, and perhaps
never might bo; so that tlio company incurred tlio risk of
losing that money— a risk, tlie magnitude of which subse¬
quent ovonts have demonstrated.
Thu statement that Edison spent this five thousand dol-
78
.... iii.il iiu ever organ incir nianulnclurc.
'i’ll e fifth subdivision is equally groumlless. Both Prescott
imd Edison wore equally interested in having as large a
77 number as possible of these machinos constructed, because
thou royalty depended upon the number used. Neither
party could have any control over the Western Union
Company’s building, or constructing tlieso until there was
a patent; and undoubtedly under the contract the Western
Union Company was entitled to build as many machines
as it pleased if the patent had been issued. Prescott made
no contract with Edison, such as is implied in the statement.
1 roscott and Edison jointly proposed their to s to tl
" “T V"lon Company, which were accepted, and there-
78 upon the ostern Union Company’s rights became absolute
a» between those parties, whatever may bo the rights of any
other persons paramount to the rights or either PrcscotL
Ldison or the Western Union Company,
This complaint was sworn to on the 11th of April, 187(j
On ho Bth day of December, 1875, Edison, by his deed
of that date, had released and conveyed to tlm Western
Union Com,, any all his rights to these inventions and
Mieroforo the statement that the Western Union Conipuny
70 is uttoi-lVfnl,8 1,0 8n"r‘? ."’itll0Ut t,loco,,so,lt °* Sl'id Edison1’
79 is uttoily false, oven if his consent wero in anv w-iv neros
8ary to their use of the apparatus. 1 7 "eU!'S-
con,,,hd,,oTir,Tk0!‘ °ri" 11,0 1,10 flftoctl, clause of the
complaint and reform] to as Exhibit IT, is no . . .
. .
1- That Prescott anil the Western Vrlu.ii'n' .
made without tho consent of Harrington nnd Gould or the
plaintili; nnd neither Gould nor Harrington nor the phiintilV
know of tho same until after the first day of February,
1875. 81
No ono of these statements is truo, unless it ho true that
tho plaintili' and Gould did not know of tho contract be¬
tween Edison nnd tho Western Union Company in its in
coption. Harrington know of it from the beginning ; and
Gould, acting ns tho agent for tho Atlantic and Pacific Tolo-
graph Company, know of it in December 1874, before any
of the pnpors were oxecutcd between Edison nnd himself.
As already shown tho Company neeopted Edison and Pres¬
cott's oiler of tho lfitli of January, 1875, which acceptance
was received by Edison on tho 20th, and the pnpors referred 82
to as Exhibits G and if, and tho notices given to the
Western Union Company nnd to Prescott wore not tinted
until tho 23rd of January. Tho only statement therefore
in this paragraph which has not nlrendy been proved to bo
false by nncontraiiKtcil testimony, is the first one, namely,
11 And Prcseott and the Western Union Telegraph Company
11 had notice prior to July 1st, 1874, of the agreements be-
"tween Edison nnd Harrington,"
Till-: 1IEFKNDANTS HA1) NO NOTIOK.
The agreement or April 4th, 1871, was recorded in tho
Patent Ollioe. In so far as that record constitutes con¬
structive notice, the defendants had notice of it, and no
further; but they had no actual notice oithor of that agree-
meat or of the agreement of October 1st, 1870, which was
not recorded.
To sustain the allegation or notice, the burden of proof
of which is upon the plaintili', four attempts have boon
J /an/— Thu notice of tliu suit of Craig against rowing.
n au< others (l>. Kx. Z S), which came to. the knowledge
.Mr. Orton some time before the commencement of this
it, but the time is not fixer],
fourth— Edison’s conversation with Mr. Orton, July Dili
resjjcet to his automatic patents, ami
/'W'—Serrell’s conversation with Prescott, August 10th
At midnight, July Oth, 7-1, Harrington wrote the fob
t'i«g letter (?. Hx. It., fol. 1408) :
11 Midnight,
ty JJcttr JCdison : W4,
UJ TT:] thiS '\M- ",lvu 1101 so°" *«, bu, having
tied wlmt was going on, have been all the evening im
tigntmg, and therefore % or you to see me bcforoyuu
,n0M 1,1,10 “»y money or go to any other
Jome to SO Bread way. I am in hopes that I can relieve
lineTlTmi''01'1;11 ‘° K‘lia0'‘ at U °’0,°0,< on tite
nmg ( Jnl 10H HeiH swears that it wa written
ntioV. m Mb 6o11. ’'!s <lul,lox O' quadruplox
should have served a notico upon tho Western Union Tele
graph Company that they owned these inventions, forbid'
ding that company from purchasing them, They might
have gone to the court and obtained an ex parte injunction
.in an hour, restraining Edison from parting with the pro
porty which they owned. They did neither of those things
but according to their theory Harrington wrote the mid
night cry, and nover notified tho Western Union Company
of his rights. If, after that, hldisou had gone on and soli
these inventions to tho Westorn Union Telegraph Company
and they had belonged to Harrington, ho would have beet
remediless. His remonstrance to his own partner agains
selling tho property which they jointly owned was no notict
to the purchaser whom ho says ho supposed was about t<
buy. If, therefore, this midnight cry, instead of being t
begging supplication to Edison, as it is, had been a spccifit
notice to him that Harrington owned these inventions, am
tlml lie must not sull them, it would have produced m
ellcet whatever upon the Western Union Telegraph Com
paiiy, to which he was bound by every principle of law tint
of honesty to give notice, and so protect them from being
defrauded by his partner.
Hut it is not true tlmt this midnight cry was uttered it
consequence of any such state of facts as Iteilf swears to
and the situation of all the parties plainly reveals what tin
truth was, and what was the subject of this supplication tc
Edison.
The facts are these : Hoforo June, 1874, Mr. Davidgo
acting as tho attorney in fact of Harrington, had been im
portuning the Western Union Company’s directors and Mr
Orton to purchase the automatic interests owned by Har
rington, iteilf, and their, associates ; and Davidgo had beet
promised $100,000 cash if he could succeed in effecting tha
clinso (D. Ex. 38).
. D. Tt. Craig, another owner in antonmlio, was also nego¬
tiating witli Mr. Orton for the same purpose, ami thoro was
the greatest necessity on the part of the automatic party to
find a purchaser for their property in the Western Union
Company (0. fol. 1104, 8).
On tho 7th or 8th of July, Edison heimr verv much
pressed for money, applied to Mr, Orton for a loan of
03 810,000, and ofi'crcd him as security a chattel mortgage
upon his machine shop in Newark. At that time quadru¬
ples had not yet been tried over a line, and nothing but
imperfect experiments on it had been made. Thoro were
no patents for it, and none lmd been applied for. The at.-
plications woro not mado until tho 20th of August follow-
ing. Edison had nothing to sell ; and it might well enough
bo that when Ins experiments should result in practical sue-
cess ho would find that ho had been anticipated by former
published or patented invontions-ns indeed he came very
04 near being by Cramer’s quadruplox in 185(1. Mr. Orton
anxious to assist Edison, who was oxporimontiug for him
lmd an inventory mado of his peisonal property ; but it was
nrn,:7"t, TC7 SC0Uritj' f°'' $10’000' nnd ho could not
propel ly lend the monoy upon it Edison, however was
at that time, as the records show, tho joint patonteo ’with
Harrington or a number of p atoms used in automatic tele-
graphy.aud lnssale of his interest in these patents, standing
m his name on record, would liavo given a valid title m n,„
purchaser If Mr. Orton had become possessed ofEdiWs
96 fan c'an S*™* W0?ld lmvo 1‘ul‘1 Barrington,
tio imh i 1 lmmU,S° 111 H'u negotia-
costed l o ,i J '.'^ urging upon him; and Edison sug-
fcosted hypothecating his interest in those intents -is
tliut ii,to. vio0rtTV f o^10’000- Ellison lclls story of
, 10"’ nt ol 287 01 plaintiiV's rebuttal. Mr. Orton
automatic^ uenm 0,1 "'IU miw!“ to J'ictlyo to him Edison's
the ti to nt ter t After this conversation with Mr.
Orton, Edison went at once to RoilV and told him that 0
ho “ was trying to raiso some money from the Western
11 Union Company.” Edison does not romombor all that ho
told ReilV, but ho told him that much ; and lie lmd just come
from Mr. Orton, whore he had been proposing to borrow the
money on his automatic patents. In tins situation, Uc.il at
once roported tho facts to Harrington, and tho midnight
cry was uttered. In tho light of those circumstances read
that cry, and it becomes perfectly intelligible. Harrington
a ie„s » Edison “ to see him before ho signs any more papers,
takes any monoy, or goes to any other place ; " tolls him, (1
" I am in hopes that I can relievo you and then says, at
this moment advorso action will cause a loss of a hundred
thousand dollars." Is this the language of a man who
supposed ho owned property which another was about to
sell ? lleill' says that they owed Edison nothing at that
time in monoy, and yet, hard pushed as they woro, thoy
raised for him seven or eight thousand dollars at once m
accordance will, the hope expressed by Harrington in the
midnight cry. And for what was this money raised
Recausoat “this moment adverse action will cause a loss D
of §100,000." What adverse action that Edison could
take would cause a loss of §100,000 at that moment?
Ol v on ly h. act > . t lv e to h. joint l itentcc in sell¬
ing to the Western Union his automatic patouts wild
were tho subjects of the then ponding negotiation with that
Company by the automatic party, which hoped to sell to
100 And yet Josinh C. Iicill’ u]>on the stand, swore that tin's
letter was written because they apprehonded that Edison
was about to sell duplex inventions to the Western Union
Company, which inventions had not yet been put into use,
and were not for some months afterward, for which no
application for patents had been made ; the value of which
was at that time, at least, entirely unknown to anv one
however much expectation there might have been as 'to the
future.
If Reid’s story wore true Edison could have proved it,
8"‘J 1,0 wns not asked the question by the plaintilf.
I bo Court will judge how far Reid' is worthy of
bebcf, except when speaking agatnst his interest.
hv him if WM, S "" nnon->'mous lol'“r written
by himself and asked whether he wroto it ho an
swered “I don’t identify it.” The question’ wns re-
pented and ho again refused to identify it. He was then
“tdon'M tlma 'T ‘rmhvritinH or not?’’ lie answered,
I don t know. Ho then rend the lotter and said, '< I re-
102 T i S,T,,.C!r0,’mSttlnocs llbout that paper.” He wns
102 hen asked Did you write it?” and ho replied "I won't b e
Posf.ibi^ 1 *<>■" He wns then tisked, «• Is i not
’■S'” 1 1 °f ‘V ^°rU ““ ! n"d tW‘3'°u kn’ow thatyou
dtd? and he said "No, I don’t know that I did- no
(P. foi. 2281). The next day ho wns asked " Didn’t you
know then that that wns your letter?" and ho nnswered^ I
did not choose to identify it at that time.1’ "Q. You ore-
forred to make that statement under oath than to adm t it
"AJ
claims that ho, and his automatic associates, own Edison’s 101
duplex patents under the contracts of Harrington of 1S70
and 1871 ; and they have filed a bill in tho United Suites
Court, against Jay Gould and tho A. & P. Company, to recon¬
voy to thorn all the rights which Harrington eon vcved to
Jay Gould by tho assignments set up in this ease and by
others. Their claim is that Jay Gould agreed to pay for
all their property forty thousand shares of tho stock of
A. & P. Company, and that the owners of tho entire
property executed their conveyances, which Harrington
handed over to Jay Gould without receiving from him the 105
payment for any part of it, oxccpting that whioh Harring¬
ton himsolf personally represented, amounting to about one
hundred and thirteen thousand dollars: and that since that
timo lie has refused to pay tho balance. Iicill', thorofore,
claiming that lie and his assoeitntos own all that Jay Gould
is supposed to got by virtue of all these conveyances, is
now assisting Jay Gould and tho A. & P. Company to re¬
cover from tho Western Union Company those dttplox
patents, with the expectation that when tlioy shall huvo ob¬
tained them, he and his party can recover thorn in their 106
suit ; and for that interest ho is swearing in this case.
It may well bo assumed that a man who will thus pro-
varicatu in the attempt to conceal the fact that ho had writ¬
ten nil anonymous letter of no grunt importance, will not bo
very scrupulous in swearing for what he considers very
valuable property.
It is claimed that the Western Union Company had
notice of Harrington’s contract in tho conversation be¬
tween Beill' and Orton on tho 16lli mid 17th of June, 1S74-
At that timo Beill’ knew, and had known for many months, 107
Hint Edison was engaged by tbo Western Union Company,
and was experimenting upon and inventing for them duplex
combinations. Ho know what Harrington and himself claim¬
ed undor Harrington’s contracts; and if ho claimed that Edison
was violating those contracts for the benefit of the Western
Union Company, in whoso omploy Edison wns to his know¬
ledge, then it was bis plain duty to linvo givon notico to tho
Company of his claims and rights. If ho kept silont when
declared that neither of them had the power, but that
was the true owner and representative of all tho in tore
Under those circumstances, Craig knowing that ltoill' i
Harrington were endeavoring to sell out this property
tho Western Union Company, set out to give notice of
rights in this complaint.
In the 38th paragraph (fob 170, Ex. Z 8), Craig char
that Harrington “ falsely protends and churns that tho An
11 mntio Telegraph Company has tho right to assign its pat
11 rights to any other company without tho assent of the s
“ Littlo ntid Craig, and their assigns, and ho is endeavorin;
“ negotiate a sale and assignment thereof accordingly." t\
at fol.l67Craig charges thntllarrington claims “that tho An
11 matic Company lias no right in tho patents of Edison, I
tlint ho, tho said Harrington, has a good right to use I
" said patented inventions for his own personal benefit, r
“ to tho damage and destruction of said company, and
" completo detent of tho said Little and Craig."
Tlioso two statements show tho object of Craig’s nttomp
notice to the AVostern Union Company. It was to prov
Harrington and tho others from selling out tho varii
patents of Edison and Littlo to thoWestern Union Compan
and knowing, as Mr, Orton did, what all these parties wt
endeavoring to do, tho object of tho notice, if ho had ei
road it, would liavo boon evidont.
In tho 83d paragraph of this complaint tho fact is
cited that the said George Harrington, “on or about I
“ first of October, 1870, entered into a partnership arran;
“ meat with Thomas A. Edison, ns appears by a certain a
" tract in writing, bearing that date, mado between tho si
“ George Harrington and T. A. Edison, by which said ci
“ tract it is provided that said Edison should givo his wh
“ time and attention, talon ts and invontive powers to t
" business and intorest of tho firm, and should admit
" other or indirect interest in or to any inventions or t
“ provemonts mndo or to bo made by him, except ns tho
12-i " liimsolf not to invent any machinery for said company
" Hint would militate against antoniatic telegraphy." Thu
same paragraph (fol. 108) states the contraot'of tlio 4th or
April, 1871 ; and this is the paragraph which is claimed to
boa notice from the parties in interest to the Western Union
Telegraph Company that they could not lawfully employ
Edison to invent or manufacture telegraph instruments for
them.
The first remark to bo made is, that this protended notice
is in a suit by Craig, in which Harrington is a defendant,
12B and in which ho is charged with all manner or frauds and
false pretences ; and Craig is not a claimant in this suit to
the patents in controversy here. Mr. Orton know that liar-
rington mado no such clnims in respect to Edison, as it is
now said that Craig in this bill charges Harrington with
making; and it is of no importance, in a controversy
between Harrington and his assignees and the Western
Union Company, what Craig notified the Western Union
Company in a suit between him and Harrington. If the
allegations of Craig’s suit aro tr o Harr Ltoiso • of the
128 fbmtn r""^0,18 nllV?’ nml “ U t0 b0 1-osm.iea that Ht!"
rington domes those charges. Ho certainly cannot claim
that Ins adversary gave a notice to the Western Union Con,,
pany for his benefit; or that the Western Union Company
. . . . >"U
that partnership business but wnse • t carrying on
with .Murray, and was not 1'l8c'lrrH"« 0,1 a partnership
sssisss
. -
fa i mere nnsa constant con-
never liail a copy of that (1*. fol. lOiiS) ; ami
it was, it certainly was not shown to Mr. Orton
upon that attcmptcil contradiction failed.
The same transaction was attempted to be used
diet I’rcscott. Prescott was asked (I), fol. IS 18)
“lie first had knowledge, notice, information or .<■
“of any kind" of tho Harrington and jfdkuu cc
1870-71, and lie swore, “Not until Jiuiuai
On cross-examination he was asked whether li
go with Edison down to Mr. Soren to see '
paper was a good one to secure Edison's inter
aulomatic. and lie snid "No," that lie never
with Edison to that ollico but once, and that v
lation to his contract of July 9th. Edison '
who went with him to Mr. Porter’s office, am
“1 think Mr. Prescott went with me.’1 He '
wards asked by the plaintills (fol. 278) whetliei
to that office with Mr. Prescott more than once
He said, “I think 1 called there twice;'1 but
Prescott ho thinks he unli/ went once; so that ill
contradicting .Mr. Prescott, lie conlirnis him. i
cott and he wore there on the 9th day of Jt
when the contract of that date was drawn by M
and Edison had evidently confused that transac
whnt happened in tho attempted loan of the so
In this same connection is the conversation
Edison and Prescott, in tho fall of 187-i, c
Craig’s claim. Prescott thus status tho liict
1414 and fol. 1418.) In October, 1874, the
The Telegrapher said to Prescott that “Edi
“ contracts with Tom, Hick and Harry ; and he t\
“says, told, as a rumor, that Craig had a contract
inert out. To contradict this Edison was called (fol. 2S0),
ami lie confirmed Prescott's statement ; ami at fol. 203 lie
ixphiiucrt the matter: Craig had a contract with him in
1809 for an automatic perforator, and that was the whole
:>f Craig’s claim.
Craig's claim against Harrington and others under his
.■ontraets already referred to, wns a dill'orcnt subject.
Fifth. — The next attempt to charge Prescott by a casual
remark, said to have been made by Sorrell, August 10th,
1874, with an actunl knowledge of the agreement of April 4 th,
1871, of record in the Patent Ofllee, is entirely unimportant,
if true; ami is evidently a mistake on the part of Sorrell.
Prescott's rights vested on the 0th of July, 1874, by the deed
ot that date, and ho could not be alVectcd by any notice, even
if one bad been given, which would have nlleetcd a person
who had not vested rights. The casual remark which Sor¬
rell made at some time, and which ho thinks he made on
tlio 19th of August, was this (D. fol. 205): “There is a eon-
“tract between Kdison and Harrington on the record— has
“that any bearing on this ease 7” To which .Mr. Prescott
said that that contract related to automatic telegraphy, and
had nothing to do with this matter. When pressed, under
cross-examination, to specify the time in the conversation
m which that remark was made, ho wns unnblo to doit; and
evidently the remark had no relation whatever to the sub¬
ject under consideration, which wns, whether Prescott
should join m the specification ns a joint inventor or ns an
assignee— ho already having oxccuted his contract with
ltdison more than a month before. He also had a conver¬
sation o„ this subject with Prescott in January after this
eontiovorsy arose, and after these contracts between Har-
inigton and ltdison had become known to Prescott.
J"“°U Ts"'orn thiU ho n°vor heard of either of these
not lir: 1875 i "»(]i >1' that is true, lie could
,nado 1,10 ,ui8wcr ‘o Scrrcll in July, 1874 IIo
Sera'll never in his ,'iresenec spoke of any contract between
Krtison and Harrington previous to 187o (lot. 13-'), tint
that he did have a conversation with Sorrell 1,1 '!*
which those contracts were discussed (fol. L329). U .»
r i tl ef 1 t ierrell was mistaken about the time,
although he stated truly the remark ; and it is manifest that
Kdison knows that Sorrel was mistaken, or he would have
been asked the question when he was called to contradict
Hut if it nil occurred on the 10th of August, 187o, it
is or no possible importance. Tho contract rctorroil to
was on record in 1871, and if properly on record it was
constructive notice of its contents, which could «ol be
strengthened by any suggestion by a stranger that
was such a contract on record. _
A stranucr to the title cuntiot give notice )) ,l o
gestion or a rumor so as to allect the rights of other par
des. Kdison was a party to that contract, and according
n, Sorrell’s testimony Kdison said, when the rptMJ1™ ““
asked, that that contract related to automatic. ’ *
no reason, therefore, why Prescott should have looked at y
further after that statement, One man says, ;
“ tho contract that is on record to do with tins case ^ ,
party to the contract says “ it has nothing to '
and Prescott relies upon that statement. ' 1 .
•iSr^^ottkn^
the time that Harrington and Ids party were
of what Edison and lie wore doing, and never •
claim. Edison showed his contract with 1 w > ,
9th of July to llarringto a 1 to He.il a 1 - ‘ oy undo,
stood it jiorfectly, and never opened their m ^ t)i.
Ion contracts of 1870 ami 1871 is nn afterthought
Firsl. When Jay Oonlil, as the representative of the A.
and V. Company, negotiated with Edison, no rel'erenee
whatever was made to Harrington's contracts, and lie pur¬
chased Kdison s imerest for Ids principal as an entirely in-
M!) dependent transaction. On the 80th or December, 187 1, a
contract had been substantially agreed to between the
owncis of the automatic and Jay Gould, whereby the A.
and P. Company were to acquire all their interests for forty
Uiourand shares of the A. and P. Company's stock (Deft's
•' 1>i ’ 1,1 lf nt tllnt tl,no u Imd been supposed by
.my one that the duplex inventions of Kdison passed under
the Harrington commote l o 1 1 1 -no 1 co u do ox
penditure of money to pay Kdison himself for them. By
deed of 1871, Kdison had divested himself and invested
50 li,r,,g- V'','1 I,0'V°r 0t 811,0 ovor whatever was in-
. « to the ill r i "r,d l^r0f0r°' lidis0‘1 000111 noth-
eomrl rtr Unm"810" WM 10 *»«ke »„aur tll0
contract of December 80th, 187-i.
It was, however, a very good investment Tor Jay Gould to
naive, being himself the controlling spirit of the A. and 1>
°l,I,osilio,i t0 ‘bo Western Union, and a stock
“stSST*-
i “ U'l,Lr "s 001 fr Us with Kdison, but that was
claimed by Ilarrilieton to covlr "'"’““‘T oolltraols were
Sccondlu i.’.u i oovop Kdison a duplex inventions,
“’v* 18011 hag Droved #lm# Tin
. .
quadruplox was iioveiopeti. ami wuen, tnereiore, tno auto¬
matic became relatively of no value, Harrington said that
Kdison ought not to do it, because “ it might hurt them
but lie claimed no logal right (p. fob 1321 to 1329).
Again, on Monday, the 20th day of September, 187-1, Har¬
rington wrote a letter to Sorrell (D. Ex. 30) asking him to
11 look ovor tbo Harrington and Kdison contract, and see if
,'t does not cover tbo dnplox and qiiadruplox.” On tlio 28th
ho caino to Sorrell to nsk his opinion, and bo then bused his.
claim upon tlio expression, "fust telegraphy," under which
lie contended lie hail n right to the quadruple* and duplex
(D. fob 209). Ho did not nt that time claim anything un¬
der tlio contract of 1870, but only on tlio theory that tlio
duplex wns " fast telegraphy " under the contract of 1871.
Wlmt opinion Serrell expressed, if any, does not appear ;
but, ns Harrington know perfectly well wlmt "fast tele¬
graphy " meant in the contractor 1871, it cannot bo supposed
that lie seriously believed in it. If ho hud, ho certainly
would not Imvo sold the quadruplox forfivo thousand dollars
to Jay Gould, or bo certainly would Imvo demanded of
Edison twenty thousand dollars out of tlio rnonoy paid bint
for it by Jay Gould.
Again, tlio “ midnight cry " of July 9th, if llcilf tolls tlio
truth, is perfectly conclusive that nt that time Haningloa
bad never eatortained tlio thought tlint lie bail any legal
rights to Edison’s duplex inventions made for tlio Western
Union Company.
ntt FIUUOUI.ENT ACTS OF PLAINTIFF.
lfrsl. — Jay Gould, noting for tlio A. and P. Company,
began his operations by corrupting Thomas T. Eckert, tlio
Superintendent of tbo Western Union Company, mid A. II.
Cliandlor, one of its officers, in December, 187-1, and tints
gaining them over to assist him in inducing Edison, also in
the employ of tlio Western Union Company, and directly
under Mr. Eckert's sunerintondeiico, to convoy to him the
It palliates very mueli the wrong which l‘M i son tlitl tlmt
lie was urged to it by the Superintendent of the Western
Union, whoso duty it was to protect that company from tho
depredations of Jay Gould, hut who was found cooperating
with Jay Gould in this treacherous act, in which ho be¬
trayed his employers and opened the door ho was employed
to gunrd. Edison was a young man in need of money, anil
when ho wns urged by the trusted servant of the Western
Union. Company, and tempted with $80,000 cash, it is not
to bo wondered at that he yielded ; hut lie honestly told his
betrayers all of his obligations and contracts, and concealed
nothing from thorn.
The fraud and treachery of Gould and Eckert, however,
aro not palliated by Edison’s conduct, but rather are aggra¬
vated by it. It should have arrested thorn in their purpose
of tempting him to tho commission of this wrong, that he
fully and frankly told them all, and in that hour of temp¬
tation throw himself upon their generosity. They did not
spare him in his weakness ; and now they have tho audacity
to eoino into n Court of Equity and present themselves with
their hands black with that crime, and make it tho foundation
of a claim in equity for a title.
Secondly. — Tho noxt picco of fraud done by this party is
tho forgery of the Patont Office record. Which of them, or
which or their tools, did it, does not appear : but it does ap¬
pear that it wns dono, and that they linvo attempted, in this
Court, to obtain an advantage by reason of it. On tho 20th
of January, 1875, a certified copy of tho Patont Office record
of tho Harrington agreement of 1871 wns issued, showiiw
that at that time the record had not boon forged, and that
the words wore '‘automatic telegraphy mechanical print
crs. (D. Exhibit 88.) Mr. Wilson, the custodian of the
records, produced the original record, showing that the
word "or Mind been interlined between the words “ tele-
gi'aphy ’ and "mechanical," in a different handwriting and
a diflcrent ink from those of tho original record ; and the
that interlineation did not exist. Mr. Quirnby also testified
that early in 1875 he cxnmincd the original record, to see
whether the word " or ” was in it, and it was not, at that
time. (D. Eol. 75). It also appeared that attention had
been called to that record early in 1875, when this
controversy first broke out in the Patont Ollicc. Whoa
tho plaintiff opened this ease to the Court it at¬
tempted to introduce into tho ease as uMdenco a certified
copy from tho Patont Office of tli s sane loeument ale
after tho forgery had boon committed, in which the word
"or" appeared written out rogulnrly in the line, ns if the
original record was writton in tho sumo way ; and it was
pressed upon the Court ns the proper evidence under a
certain stipulation made between the parties in respect to
copies from tho Patent Office. This certified copy had not
tho initials of tho clerk who makes examinations upon it,
nor the words “ Exd,," which nil copies from tho Patent
Office linvo (D. Fol. 22). If it had boon a copy made in tho
Patent Office, it would have appeared on tho Taco of tho
copy .that tho word " or" had been interlined. This forgery
in tho record was not done with tho knowledge or consent
of its custodian. (I). Eol. 80).
Tho plaintiffs oiler was overruled, and tho plaintiff was
compelled to produce tho original contract itself, in which
tho word "or" is struck out, after having been originally
written in tho paper.
Third, — The next fraud was perpetrated by Josiah C.
Heilf, who did not scruple to use the name of L. W. Sorrell,
without his knowledge or consent, in a telegraphic despatch.
In a telegram tho handwriting of the sender does not
appear, therefore tho receiver lias no moans on the lace of
tho despatch of knowing whether it is a forgery, and Heilf
took advantage of this fact to oonunit a fraud.
Ono of tho things invonted by Edison under his contract
with the Western Union Company is known ns “ Case II f
and alter it was applied for, Edison authorized Miller to
receive his pay for it from the Western Union Company.
(P. Eol. 1,162, fol. 0i3). Objections having been made by
164 “ Case 11" from a conlrnplox into a diplex, and thereby made
it a valuable invention, ho determined to withdraw the old
application and amalgamate it with the new one, Case (lit;
and for that purpose when Prescott had become his partner
under their contracts, the powers ol attorney w liicii had
been given to Munn & Company to apply for tho inventions
in "Cases A to 11” were withdrawn and eigiit new powers
of attorney, covering those cases, were given to Set-roll
acting ns tho agent of Prescott mid Edison jointly (P. Pols.
1184-5). Edison also testified dial Cases A to II woro all
165 included in die arrangement with Prescott (Pol. 1100).
I.. this situation Jny Gould seduced Edison from the
Western Union Company, and procured his power of ntlor-
ncy and his authority to issue die patents 94 to 100, to die
A. and P. Company ; and then the question of titic'nrosc in
the Patent Office, and was decided in Ihvor of Prescott.
Thereupon die plaintiffs attempted to evade dint decision
and surreptitiously obtain a patent for die invention speci¬
fied in “Case 00,” by transferring inlo tho rejected applies-
mn ,, llVnC"' illvc"tio"s of Edison, which
106 would convert 11 Case II " into a diplex j and for that pur¬
pose, having tho assistance of some one in tho Patent Office
tho application in " Case II " was amended on tho 18th of
March, 1875, by inserting die words “ in the samo direction "
in addition to tho words, "from opposite directions," wliioh
wo™ the limitation of the original application, and beyond
winch the original combination was unable to operate, and
by adding such words of description as to exhibit to a
poison skilled in the art the new combination which had
. ttsc wo'rds SUbSCtlU“Utl3’ ‘br a'Ul th<i“ 0l“illli”S
167 “The combination with a main line circuit ora receiving
instrument operated by changes in tho polarity of the
curreut, independently of tension with another receiving
mstrument operated by the changes of tension indopend
„ t of polarity, means of changing tho polarity of tho cur-
' “ 2:lrna0r,t1,,?in«tll° t01isio" of 1,10 ourrcnt
substantially as and for tho purpose specified " (D. Ex. 6
in '“'case lift " 'T- H " ™d the in vent
Ellison 1,1 ' ifM l,lnlnt,fls t0°h pains lo provo by Mr.
Edison himself when they asked him, after reading to him
tlnit claim, this question : “ Stato whether that expresses 188
“your principle ns it is in 00?” “A. Yes, sir; perhaps
“ hottor than tho claim in that ” (P. fol. 1381).
Having got that specification thus amended, mid the ap¬
plication for Caso 99 being hung up in tho Patent ofiico, in
consequence of tho controversy there, tho problem was to
ovado tlie ordor of tho Commissioner and issuo Caso II as a
pa tout. Sorrell was tho agent of Edison and Prescott; and
had Edison's power of attorney controlling this caso, and
his ordor to tho Patent Office was necessary. It could not
liavo been got by HeiiV, or by any otlior person than his 169
clients jointly, ir ho wuro appealed to; and thereupon iloill
was selected as tho agent for committing the fraud, and ho
did it effectually. On Saturday it was Serroll's custom to
bo nbsont from his office. On that day, being tho 24th of
April, 1870, lloilV wont to Sorrell's office and procured his
clerk to send this dospatoli : “ J. G. Griiinoll, Cliiof Clerk,
“ U. S. Patent Office, Washington, D. O. Please advise ino
“ condition of Caso H, of T. A. Edison, tiled April, 1873,
"and amended by himself. If ready, please issuo inline-
“ diately, and elmrgo my oeeount for final fee. L. W. Ser- 170
" rell." Upon this despatch, the Examiner having ohargo of
the ease issued Case 11 as patent No. 162,633 to Edison Ss
Uarrington,
Tlieso are the parties who are appealing lo a court of con¬
science for relief; and tlieso are the acts iipou which their
claims stand.
HAIMI.VGTOJf's OONTitACr OK OCT. 1, 1870.
Tlie plaintiil’s ease assumes two things in respect to this 171
contract : First, that it was a partnership which oxisted
until Oetobor 1st, 1875; mid, second, that it vested Har¬
rington with n legal title to any invention which Edison
might make during the continuance of that partnership ;
and upon tlieso two assumptions the piaintili; as tho as¬
signee of Harrington, claims title.
As to tho first — that partnership ceased in 1872 by tho
violation on the part of Harrington of his terms, and tho
withdrawal of Edison from tlie business of the partnership,
1>„ .. , 7 "hwbwhiuiuij derived from Kdisoti.
% the terms of tlmt contract Kdison was to be paid oul
"Z
There was nomr!^!, Jlnrnn8lon 111 ‘but burner
Edison could have bc ‘7, ‘ TfoT,! '' ‘ ^ ^ "'t' " 1 ,d
ltnvo made. 1 f 'y mvon‘io"8 lle might
imrtnT
Company or to P o» an 0T" ‘° U’° Wcst°™ Cmon
‘bey srenotallccted by it V°r '* mi»ht h™> been
docs not exist, and it' cam7t°i7 l.°.a" "lvomio" "'bich
When an invention ha.; Zn , , T " *' "" y'Bn,n0,,L
10 « patent arises, and it can be made 2 snl "‘° ‘T ri«l“
assignment; but until it is made hn!„ ■ JC?t. °f 11 lo«al
76 assignable. The wD„nl.„ } . tl‘ore 18 "othing that is
bnew that the inventions „ , C°"1J,,n"T “»'l Hrescott
i" ‘heir presence mul byll ZZ T™* ,UJr0 'TCrc -etui
knew that time m,.i./..t . . l'mct, and therefore thuv
chaser, Harrington would have lost all bis rights; and it 170
need not be argued that be is at least in no better situation
in respect to these inventions, which did not exist than he
would have been if they had existed and had been ’assigned
to him at that time. °
CONTRACT OF APRIL 4, 1871.
The plaintllV takes nothing by this agreement. It was
recorded in the Patent Office, but there was no invention
existing at the time of that record to which it could apply • 177
and an assignment of what does not cxist.is not a record¬
able instrument, and does not givo constructive notice to
tlio world in respect to any invention wliioli subsequently
The Western Union Company and Prosoott saw the in¬
ventions which aro the subjects of this litigation oroatod.
They knew that they did not exist until 1873 or ’4. The
pinintill’s in this case do not claim their conception earlier
than 1872. Therefore no assignment of thorn could oxist
until after tlioy wore created; and if it bo claimed that the 170
contract of April 4th, 1871, is a covenant to convoy future
inventions of all kinds, such a covenant as that is not in its
nature recordable, and no man is bound to take notice of it.
It, therefore, follows that the record of it has no etfeet upon
tin; inventions which are in controversy in this ease. It
stands no hotter tlinn if there wore a deed of land recorded
containing a covenant by the grantor that lie
would convey to the grantee any other lands
of which ho might afterwards become possessed, and
subsequently, to the knowledge oftlio purchaser, ho became
possessed of another piece of laud, which he conveyed to
‘bat purchaser. That purchaser would not be bound by
the constructive notice of the record which contained the
covenant of tho grantor of another piece of land ; much
less when the subject matter is an invention which did not
exist in tlie world at all, and which might never exist nt
tho time when the supposed covenant was made. Tho
title to a patent is a creature of statute. It must bo con¬
voyed by nil instrument in writing, and nothing but uu
(cgice impaired by that circumstance. ** ,M '
plniialion outside of the contracTusT" T! "°0<! "° 0i
^TsF1®''
vented nnd «., plied bofnl ,i .lho 'vori] was i,
182 mntl° system; and vary proper • wTan'V °,m|B ‘° th° m,U:
pliiiutill's' rebutting Exhibit 7. "0l t|°o lo"Si and ip tin
,‘T '» WO ,1.0^^',' 'K® f0‘ 122). H is allege,!
'it the rnto of ovor a tlinmm.rn Co'»pniiy transmitted
“*° Yort to W 1 lou fro°nd:vLV^ “0 Ir
, York- About sixty words am?,, VVasllmeto“ to New
oieetro.pingneiie system ean t ow s ", I "? " "m,‘> « ««
tlmt- lbu olioiuionl system is J ‘ d co 'P rod vitl
183 Tho word "ft, “ ZZ ‘miW,y Ca'hd *0 fast
1110 crc*' tuico that The 0 VL '« « f
great number of words 00111,1
dial practically the automatic d . "0t fr°"‘ tbo fact
0 d ■> 1 dly messages fr, [ tl n V“ ‘ “ ua'wbl° of
Under the automatic system a , ol|dor to the reooivor.
Secondly. Hut the plaintiffs say that they are entitled
to these inventions because they "are or may he applies.
bio to automatic telegraphy.1' To this, in addition to
tlm answer that there was neither actual nor constructive
notice or this contract, there are two other sufficient an-
suers. If Inc ilcfcmlunU) are bound by the constructive no*
lice then they are bound only by what is of record, and the
words that arc of record are “ that are or may be applicable
automatic telegraphy mechanical printers:" and it was
tins fact that made it necessary for the phiintill'lo procure a
forgery in the Patent Ollice record in order to found its
claim upon a dillbrent set of words.
• W1‘°" .llns co"tri,ut "'as drawn, Edison was inventing
nieclimuoal or copying printers," which me machines in
which tlio operator plays upon lettered keys like those of a
piano, and the machine prints Homan letters upon a sheet
of paper. Tlicso tilings are now called " Typo-Writeis,"
and are very familiar. In 1871, there were miincrmis in¬
ventors endeavoring to perfect those "mechanical printers,"
and among others Edison ; and it was supposed that they
" bo 11 lltL'ful adjiiaet to autoiniitic telegraphy, be-
ca....c it w„s thought tual die operator upon one if them
could translate and write out the messages that oamo out on
a paper slip from the automatic telegraph more rapidly
than a writer with a pen could do it. (P. fob 820 to
JL, ; also, 867 to 801; also, Defendant's Exliihit 8).
the instrument also hud n broader use than that in ils gen¬
eral application as a type-writer for business purposes:
a", therefore, when this contract was made, unless Edison
md limited the uso of his mechanical prmtors to automatic
telegraphy, ho would have sold to 11 1 n glo I t i tgl t
ho valuable, and was not exclusively applicable to automatic
telegraphy; hence the word or was struck out of Unit con-
M l 1 1 ' t Icl a 1 1 v
ii tliis contract.
The invention in “ !>!)," mnl in the ntliof num.
i" controversy here, is simply the cnmhiimtioii
icnts to make n new oleol ro-maj;iiotio telegraph,
i has I icon erroneously assumed liy tlio plaintiff,
on of any now system of telegraphy, or of any
ts.
iro-mngnetic duplex and ipiadraplox are more
f years old ; and Edison’s present invent ion is a
1 modification of these old nrrniij'emonts. If a
lid be granted on the application of “ 1)1)" its
patent lor the combination substantially de-
i no more ; and it would depend upon the cor-
■ween two kinds of electro-magnets, and two
electric currents, and no more; and this c'omlii-
pplionblo to mitomatie telegraphy only in the
".v possible electro-magnetic telegraph is appli-
omntie telegraphy and. no farther,
matin perforated transmitter of the chemical
lie used to operate the manual key of the elec-
e system at one end of the line, and the electro-
reiver may lie used at the otln tr end to open
local batten- eirenit which will record the stir.
POINTS.
I.— The dependents, Prescott nnd Edison, are, under the
agreement of August 10th (Ex. F), in possession of a legal
interest or title (except so far as Edison's interest lias vestal
in the W, U. Co. by the conveyance, Exhibit 20), as distin¬
guished from an equitable interest or title. The present in¬
choate or imperfect naturo of this interest does not prevent
it from being legal in quality nnd form.
The precise juridical character of the rules ^
respectively asserted by tho parties to the certain
inventions in suit, should be scrutinized at tho
outset; since upon considerations thus arising,
various important questions, including tho question
of burden of proof, may depend.
Tho term "lognl right ' is generic, signifying a class of
rights founded upon or recognized by municipal law.
This class includes “equitable rights,” that being a term
which signifies a species of legal right arising from a stale o.|g
of facts specially cogniznblc by tho Court of Chancery ; such
ns those involving fraud, accident, mistake, trust, etc., and
in nil which cases tho remedy is, to a certain degree, sought
or enforced through the conscience of tho party. The right
which an inventor has in his invention is essentially a legal
"S'". It docs not in the slightest degree partake of tho
nature of cquitablo rights. This is the same, whether be¬
fore or aftor patent granted. Tho right which tho assignee of
nn assignable invention takes under an assignment, request-
lng tho patent to be issued to him, is also a legal right ; and 050
the case is tho same whether tho patent is to issuo to him
solely or jointly with another person. The right which the
assignee of nn inventor takes in his invention by any in¬
strument which does not contemplate the issue of the patent
directly to such contracting party, is nn equitable lognl
fight; that is to say, it is a legal right cognizable byacourt
of equity, bccauso tho law implies a trust iu tho inventor
to reooivo tho patent for tho benefit of this cquitablo assig-
cxpec.t:"io" »h«t ^ ,>,'!, i!°
will be continued by the soverce^JowoVTo^to''' ' 0",,iOn
and '*im in Ibe enjoyment of a n g'V?
262 Tight of TmpoS obHgm^f ''uSn' tben?>n' a lc«al
jStffSS""* “•!"* •
288 “• feix-;
i-i.™ i.. ■ '*“*' » m~,',
254 vpj’nnco ffiaVe^y tbe'invLtr^ub 10t1'’ b°ing tbo fi,st C011’
Its inventions took on their »a/cJ t/"0"1,10 tl,e dnto when
^-“awSPsT-asis:
^**»*<jK8iKssiB
DCCFol'!S°mmfebnCrTLncber' “0."
. NdtLer ‘he law of nature nor tl,n
‘ ™ lo ”J -» “»
a ne soie property winch nil inventor hi
invention, prior to the grant of letter* n
ho inchoate right to become vesta! with ,
lute right to its exclusive use, upon con
with proper statutory conditions.
u " Tll° inventor or a notv and useful ii
' tnonl certainly has no exclusive right to
" ho oblair'3 " patent. This right fs civil
the patent, mid no suit can be maintaiiied
1 inventor ngninst any one for using it bet
' Patent is issued. But the discoverer of
‘ and useful improvement is vested by la
| an inchoate right to its exclusive use, wh
may perfect and mnko absolute bv proe
in the tnnmicr which the law requires,
gerald possessed this inchoate right at tli
of tho assignment. The discovery had
tniicle, hud tho specification prepared to oh
patent. ' '
“ A"d it Appears by tho language of the a
ment that it was intended to operate upe
perfect legal litlo which Fitzgerald then I
lawful right to obtain, ns well as upon tl
“'onto and imperfect interest which he act
possessed. Tho assignment requests thal
intent may issuo to the assignee. And
would seem to be no sound reason for dele
ho intention of the parties by restrainiiq
UBignmcnt to tho latter interest, and conqie
hem to cxccuto another transfer, unless the
'f Congress makes it necessary. The C
“ink it does not. The Act of ISStI dee!
j"'t overy patent shall be assignable in law,
“at tho assignment must bo in writing and
orded within tho timo sueeilied. But the tl
11 make that right perfect nml absolute at his
“ pleasure, tho assignment of his whole interest,
“ whether executed before or after the patent
" issued, is equally within tho provisions of tho
11 Act of Congress. * * * * *
" * * * Wo do not think tho Act of
" Congress requires it; but that, when tho patent
“ is issued to him, the legal right to tho monopoly
“ and property it orented was, by operation of the
" assignment then on record, vested in linos Wil-
“ der.",
Gnyler vs, "Wilder, 10 How., 477-93-1
This right to obtain a patent is recognized by
statutory law as assignable, thus :
" Patents maybe granted and issued or reissued
" to tho assignee of the inventor or discoverer, but
“ tho assignment must first bo entered on record in
“ the Patent Office.
Section 4,895, Bovisod Statutes.
It is evident, therefore, that tho intending
assignor must first be an actual inventor of some¬
thing to be assigned.
. 11 is equally evident that the samo condition
m tho progress of invention which evolves tho
inchoate right to a patent, ronders that right as¬
signable, tho criterion being the existence of some¬
thing capable to be patented.
Head note. — “It is when speculation is reduced
“to practice and no longer rests in uncertain
experiment, that an invention is made, and tho
" idea of which ho has such vague notion, ho does
“ not become an inventor in tho sense of tho
" patent law.”
liawson or. Mayor, otc., of N. Y., 1 Fish, 253,
Hall, J.
In "White vs. Allen (2 Fisher, 446) J udgo Clifford
says: “ Original and first inventors are entitled to
“ tho benefit of their invoutious if they reduce
" them to practice, and seasonably comply with
" tho requirements of the patent laws, in scouring
“ letters patent for the protection of their cxclti-
"sivo rights. While the suggested improvement,
. “ however, rests merely in the mind of the origi-
“ nator of the idea, tho invention is not completed
" within tho meaning of tho patent laws, nor aro
“crude and imperfect experiments sufficient to
"confer a right to a patent; but, in order to con-
“stitutc nil invention, in the sense in which that
“ word is used in tho Patent Act, tho party
"alleged to havo produced it must have proceeded
“so far as to have reduced his idea to practice,
"and to havo embodied it in some different form.’1
PnrUluirst vs. Kinsman, 1 Blateli., 494.
Curtis on Patents, see. 43.
“Mero discovery of an improvement does not
"constitute it the subject matter of a patent,
" although the idea which it involves may bo
“ now ; but the new set of ideas must be embodied
"into working machinery and adopted to practi-
"The making of drawings of conceived ideas is
“not such an embodiment of those conceived ideas
"into practical and useful form ns will defeat a
“patent which has been granted."
Equally strong is the Inngungo of Mr. Justice
Nelson in Winnns vs. Harlem Hailway Co., Frank-
lin Jour., 8 ser., vol. 61, p. 822, where ho says:
" The circumstance that a person has nn idea or
“an improvement in his head, or has sketched it
“on paper, and then given it up, neglects it, does
“ not, in judgment of law, constitute him a first or
“original inventor."
“Numerous other eases nfilrm thcsnme doctrine,
"and it must, therefore, ho considered nn estab¬
lished rule that illustrative drawings of conceived
11 ideas do not constitute nn invention, and that
" unless thoy are followed up by a reasonable oh-
“sorvanco of tho requirements of tho PutontLaws,
“they ean linvo no effect upon a subsequently
“granted patent to another."
Hoove vs. Koystone Bridgo Co.
~ ^ — lm’nS tho Uiicontrndiotcd evidence in this
ease to ho that those inventions woro not made
until afior 1871, then tho only right which Edison
possessed on April 4, 1871, was tho right to make
these and every other concoivnblo invention if ho
could, This right (belonging equally to every
member^ of the human family) cannot be said to
have, within the moaniug of tho law writers, a
potential oxistonco, bringing it within tho scopo of
present bargain ami sale (Benjamin on Sales,
8 78)> however it may he affected by execute™
contracts to sell.
“A present sale ean ho made only of a subject
having an actual or possible oxistonco ; if, there-
„ tlle suhject of tho sale do not exist at tho
„ tl"’° of ‘he sale, no contract will arise— as if A.
sells his horse or house or certain merchandise
to 13. upon tho supposition that thoy are in esse,
" when in foot tho horso is dead or tho houso or
“ merchandise is uttorly destroyed by firo. If,
“however, the thing sold bo only partially
"destroyed at tho timo of the salo, tho buyer may
“either abandon tho contract, or ho may take tho
“ thing at a proportional reduction of tho price,
" according to the torms of the original bargain.
"So, also, although tho subject of sale have no
“ present existence, yet if it ho tho natural product
“or oxpeetod increase of something to which the
“seller has a present vestod right, tho sale will he
“good. Thus, a valid salo may ho made of tho
"wino which a vineyard is oxpeoted to produce ;
“or the grain that a field is oxpeoted to grow; or
“ tho milk that a cow may yield during tho coining
“year; or tho future young that may ho horn of
" tho sheop ownod by the vendor at tho time of
“tho salo; or tho wool whioh shall grow upon
271
272
Story on Sales, sec. 1845.
"But a mere possibility or contingency not do- 278
" pondont upon nny present right, nor resulting
“from nny present property or interest, cannot
“ ho made tho subject of a present salo, though
“ it may ho of an execution executory to sell."
lb., see. 186.
Benjamin on Sales, see. 78, 81.
"l’rohahly it has occurred within tho profes¬
sional experience of many of my readers to
“ he called upon to consider the operation of 274
“ contracts sometimes made by inventors, by
“ which thoy hnvo obligated themselves to convoy
“ inventions not in esse, and tho question may
“ arise whether the recording of such contracts in
“ the Patent Ofiico within three months of the time
“ of their execution will operate ns notice of title,
“ so ns to prevent the acquisition of a title by
“ auothcr purchaser after a patent has boon oh-
“ t [lined. We imvo seon that a contract of sale of
“ a futuro invention, although in terms an absolute
" sale, can only operato as a contract to convey ;
“ and there is no statute which contemplates or
11 requires the recording of nny conveyance, ex-
" oepting assignments of existing patents, after
“ patents hnvo been obtained or assignment of in-
“ volitions made and perfected, when it is intended
“ to hnvo the patent issue to the assignee. It lias
" always been assumed that the object for which
“ the act ofI836, § 11, requiring the recording of
“ assignments of existing patents within three
“ months, is the protection of subsequent bona fide
“ purchasers, although this object is not specially
“ declared. Assuming, then, Hint the recording of
“ such an assignment operates ns notice to every-
“ body of tho title of tlio assignee, can such an
“ effect be attributed to tho recording of a contract
11 that is not only not patented, but has not yet
"been made? With respect to patents already
" issued, an assignment necessarily points to the
“ patents convoyed, and tho public records afford
" to every ono tho means of ascertaining what has
“ Passed by tho assignment. But a contract to con-
" vey an invention not in esse, although recorded,
"affords a subsequent purchaser of an interest
1 in a patent no moans of ascertaining what
‘tho inventor had bound himself to convey
‘to another person. It is true there might
‘ bo oasos wliero it could bo made certain by
‘inquiry whether tho invention contemplated
' by tho contract was the same as that subsequent-
‘ ly patented. But is tho subsequent purchaser
‘ bound to institute such an inquiry? We are
' considering a question of notice of title, and if the
I instrument supposed to operate ns a notice could
' not, in tho nature of things, give tho information,
can tho subsequent purchaser bo bound to look
elsewhere? This difficulty, ns well as tho
further consideration that the stntuto does not
" contemplate tho recording of such contracts,
11 should porhnps lend parties to understand that
“ contracts for the convoynncc of future invoii-
“ tions are really of no greater forco than as the
" personal covenants of the inventor to be spcci-
“ ficnlly enforced against him ; and that to record
" them will not necessarily operate ns notice of
“ title, so as to defeut a title made by the inventor to
“ another person after he has perfected the invention
“ and applied for or obtained a patent."
Curtis' Law of Patonta, p. 206, 4th ed., sec.
183, N. 2.
III. — Tho plaintiff can succeed in overturning tho legal
title shown above in Prescott only by establishing, beyond
doubt, each ono of tho following propositions. Tho burden
of proof is upon it throughout tho trial, and upon all tho
evidence, notwithstanding cvidcnco may bo givon to estab¬
lishing any issue prima facie.
Hcincman vs. neard, 62 N. Y., 4-18.
1. That tho inventions brought in question by this
action arc clearly within tho contemplation of
tho instruments dated Oct. 1st, 1870, and April
4th, 1871, or one of thorn.
2. That tlicso instruments are of such forco and sub¬
stance that they would (as between Kdison and
Harrington) tako effect upon inventions coining
into cxistonco subsequent to their date.
8. That Prescott took title, with notice, of tho above
mentioned instruments, and of the right claimed
by Harrington undor them.
4. That the A. & P. Co. is an innocent and bona
fide purchaser, for valuable consideration, without
notice of tho rights or interests of Prescott, or tho
limitations upon Edison’s power to convey j and
ir it relies upon such a'purchaso, without notice, it
must establish that clnim in a legal manner,
that is, by averment and proof.
72
288 Gallatin "'iw. Cunningham, 8 Cow., 874-381.
Beckman vs. Frost, 1 Jolm., Oil., 288-301.
(Note. — The revors.nl of this ease, 18 J. B.
643, is not upon this point.)
2 Wharton’s Evidence, § 1,831.
5. This burden of proof, ns to this point, is not sup¬
ported by reading in evidence a conveyance recit¬
ing payment of consideration.
Mooro vs. Metropolitan Bk., 65 N. Y., 41.
284 IV . — This action will fail entirely unless having succeeded
first ngninst the legal interest of Preseott [including, as that
interest does, the beneficial protection arising from the
limitations and conditions reciprocally imposed and ac¬
cepted by Edison and himself, as a part of tho consideration
of tho premises'] (Ex. 0. fol. 110), it succeeds next against
tho equitable titlo of tho W. U. Co., by having
1. Averred and proved notice to tho W. U. Co. of tho
protendod interest of Harrington ; and, also,
286 2. A Iona fide purchase by the plaintiff of tho interest
of Edison and tho pretended interest of Harrington,
without notice of tho rights and claims of both Pres¬
cott and tho W. U. Company, existing at tho time
of those respective purchases.
V.— Theso points of difficulty in tho plaintiff's case may
be considered in an order correlative to tho chronological
order of the various instruments, pretended notices and
280 other facts mid events upon which theso questions arise.
1. The terras of tho agreement of 1870 raise great
doubt at tho outset whothcr the invention of a new
process, constituting ns the Duplex or Qundruplex
do, a system of Telegraphy, but not involving
the invention of any now instruments or mechan¬
ism, was within the contemplation of tho parties
when they provided (Ex. A. fol. 89) that tho said
parties will be pnrtners 11 as inventors and mnnufno-
" turers of all kinds of machinery, instruments, tools,
73
11 battery material, and all and whatsoever may be 287
" required by the various systems of telegraphy."
The provisions in the latter part of tho snmo ac¬
tion, that tho parties shall be interested as owners,
in all original inventions and improvements in¬
vented, purchased or obtained by them, ought
not to enlarge the scope of tho instrument ns it is
fixed by tho more specific language above cited.
Can it be supposed, for instance, that Imd Har¬
rington, during tho term of tho partnership, invented
an entirely now method of telegraphing without tho 2S8
use of wires, but by the use of lliosaino batteries, in¬
struments, etc., as belonged to the Morse system,
it would be claimed that this was the invention of
anything required " by the various systems of tele¬
graphy V" or that it would properly como within
" that partnership, all kinds of machinery, tools,
instruments, battery materials," etc.
It rests upon tho plaintiff to justify, if it can, a
larger meaning than those terms naturally imply.
It is true the fifth clause provides that Edison 289
"shall give his whole timo and attention, talents
and inventive powers to tho business and interests
of the firm ; but that clause cannot operate to en¬
large 11 tho business and interests of the firm " by
including new subject matter, simply becauso
Edison may make a breach of that stipulation, and
proceeds to invent things not contemplated by the
first clause of tho agreement. It scorns dear that
tho latter part or tho fifih clause, in which are
found tho prohibitive terms relied upon to make 290
unlawful dealings with the Western Union Com¬
pany, which would otherwise bo lawful, are them¬
selves void ns ngninst public policy and tho law of
nature.
Leather Cloth Company vs. Lorsont L. K., 9
Eq. Cas., 854.
" Aemo admittendus csl inbabilitarc seijtsum."
— Branch's Maxims.
10
After reciting the contract with the Gold and
Stock Company then in existence, this instrument
binds Edison that ho will violate that contract
should tho intorcst of the other contracting party
at any time require him to invent machinery “that
will militate against automatic telegraphy."
It also hinds him not to sell, transfer or convoy
to any parties whatsoever, without the consent of
the parties of tho second part hereto, any invention
or improvement thnt may bo useful or desired in
automatic telegraphy.
'Thus these few words seek to bind Edison :
To limit (against the superior right and interest of
society) the natural productiveness of his mind, or
in other words, that ho will not be as useful ns ho
To violate tho obligation which, presumably, ho was
under to invent nil thnt his powers would permit
which should bo beneficial to the Gold and Stock
Compnny, his first nnd continuing employer; and
■ To make his powor of disposing of wlmt belongs to
him depend upon the uncertain nnd undefinablo
condition thnt it is not “ useful or desired " (by
somo person or porsons not named) in auto¬
matic telegraphy — terms, which can no more bo
construed, in order to bo enforced, than can the
uncertain term, “ that will militate against auto¬
matic telegraphy.”
Tho agreement was one of partnership, giving to
each partner full powor over the assets of tho firm,
sion thnt Edison should “ have the control and dircc-
11 lion of the manufactory, nnd shall employ and
11 dismiss all workmen ns he shall deem best for the
interests of the firm ; shall purchase at lowest cash
prices, eta * * * machinery, etc. * * *
nnd other necessaries required in the manufactory,
11 and generally be responsible for tho enroful pro-
" serration of tho machinery and property of tho
“firm, and economical conduct of themnnufaeturing 205
“ part of tho business," and also (folio 56) that Har¬
rington might “ nt his own option, admit a third
“ party into the firm upon terms of equality witli
» him nnd with tho party of tho first part." It
appears in proof thnt Harrington usurped tho di¬
rection of the manufactory, by appointing one
Clark superintendent, nnd that thereupon Edison,
in 1871 or 1872, went away from nnd never re¬
turning to. that shop, abandoning all tho functions 090
dovolvcd upon him, and entoring, with tho knowl¬
edge, nnd, so far as the case sIiowb, tho positivo
approval of Harrington, into other and inconsis¬
tent business relations.
It nowhere appears that Harrington over ob¬
jected to this notion by Edison, or sought to re¬
establish thnt joint work nnd labor which was an
essential condition of tho partnership; nnd it docs
appear thnt ho introduced instead of a third pnrty
into tho firm five or six different parties “upon
terms of equality with him, and with tho pnrty of 207
tho first part,” without tho consent of Edison any¬
where shown ; or if that consent is to bo presumed
it certainly dissolved tho old partnership and
substituted another, of tho terms of which wo
remain still unuotified.
. Whether this instrument over related, orwas intend¬
ed to relate, to inventions like thoso in question in
this action ;
Or whether that partnership was or was not 2g8
dissolved ;
Or whether or not tho parties interested
in it are, by permitting all tho appearances of
dissolution for n period of two or three years,
estopped from denying its dissolution; all
this is still immaterial, since no notice , actual or
constructive , by recording tho deed or otherwise
was ever brought to the attention of the general
public or of the defendants.
4. The instrument of 1871 (Ex. B) does not cliargo
the defendants with constructive notice of its con.
tents by reason of its having boon recorded.
Nothing in the proof shows tlint any inventions
were in existence at its date to which it could
apply as a legal assignment, but whatever may
have been the ease in respect to other inventions
the proof is clear that the inventions in question
hero weronot in existence at its date. Quoad
these inventions it is an executory agreement
merely (Seymour v. Montgomery, -1 N. Y. Ct.
Appeals Decisions, Abbott, p. 211), and ns such
was not required or authorized by law to bo re¬
corded, and the record of it is not therefore con¬
structive notice to purchasers.
Farmers' Doan & Trust Co. vs. Mnltby, 8
Paige, 801.
Colder vs. Chapman, 02 Ponn., 859.
Bisplmtn’s Equity, § 271.
6. Actual knowledge of its contents would not tend
to call tho notice of the render to tho exis¬
tence of any prior agreement in writing, or any
ngreemo.it whatever beyond whnt is there specifi¬
cally stated ; ns notice of an existing agreement
lit writing in the terms of Exhibit A, it is entirely
misleading and deceptive.
a. It recites an agreement in which Edison stipulated
and agreed to invent and construct for tho said
Harrington full and complete sols of instruments,
etc. ; whereas tho agreement of 1870 contained no
such stipulation; and
l. That the whole of such inventions (folio 04) wero to
bo under the solo control of said Harrington, to
bo disposed of by him, me.; whereas nothing of this
sort is there contained ;
5' th° “Warrington has faith-
f f j 1 ‘ ° °°V0,mnls nml stipulations
entered into by him ; whereas tho agreement of
was, y its terms, to bo of continuing obliga-
77
lion upon loth parties for a period of five years, if it 803
continued at nil.
0. Exhibit “ B," in its recital part, states an engage¬
ment by Edison " to invent and construct for tho
" said Harrington full and complete sets of instru-
" moils and machinery that should successfully
"and economically develop into practical use tho
" Little or other system of automatic or fast system
"of telegraphy, and subsequently to improve and
" perfect such instruments or machinery, by adding
“ thereto, from lime to time, such further invon- 304
11 tions ns experience should demand, or his skill
" ns an inventor nml electrician might suggest and
"permit" JVo such thing can be found in the paper
o/1870.
Wo linvo here n principal contract for work and
labor in tnnking sets of instruments.
Incidentally to tho making of such instruments
and machinery tho possibility of inventions and
improvements of n pntcntablo character was con¬
templated. Tho entire scope of the instrument is ggj
limited by tho requirements for tho successful mid
economical development of tho “ Little or other
“system of automatic or fast system of tele-
“grnpliy."
It is assumed that no argument is required to
satisfy tho Court that the natural reading of this
paper which makes "automatic" and “fast”
synonymous terms when used with reference to
systems of telegraphy, is fully confirmed by tho
unconlrudietod evidonoo (P. fols. 1128-1128, ggg
1180-1041-1057-1548).
The granting part of tho ngroomont being road
in connection with its other portions, is perfectly
intelligible, ns relating to “ my said inventions,
" including therein all my inventions of median-
“ ieal or copying printers * * * * and all and
" wlmtoscvor my inventions and improvements,
“mado or to bo made, and all tho patonts that may
“bo issued thorcfor, that ore or may bo npplicabli
“ to automatic telegraphy mochanical printers."
Tho disputed word “or" being loti out from tin
agreement mnkcs Edison’s stipulation cousistou
with'his obligation (preserved in the agreement o
of 1870) to the Gold anil Stock Company, for tin
manufacture of mechanical printors. This oblige
lion to make mechanical printers for the Gobi ant:
Stock Company, which would have been violated
by tho conveyance to Harrington of all the patents
relating to mechanical printors is proserved by
striking out tho word "or," if that word was over
written in tho instrument.
Whatever may liavo been tho intention of tho
parties at tho signing of that instrument, in re-
spool to tho word " or," tho notice, if any, with
■ which the record of tho instrument has affected
tho defendants is not ice of the terms actually recorded,
and of nothing more.
Frost vs. Beckman, 1 Johns, Ch., 288.
Sawyer vs. Crane, 10 Vt., 558.
Baldwin vs. Marshall, 2 Humph., 110.
Korr on Fraud, Bump’s od’n, 238, 257, 207,
291 and cases oited.
The uneontradicted evidence shows that the original
record did not contain the word “or," and that that
word has been, without autlmrity, written into the
record at some time since January 20, 1875. Fol.
75, and see evidence of P. E. Wilson and A. E.
Blodgett.
7. The objections to tho two instruments in question
as to any material effect thoy may liavo upon tho
rights of tho parties, may, therefore, bo summar¬
ized as follows:
AS TO TUB AGREEMENT OP 1870.
». That it was never intended to relate to inventions
like these.
That it was terminated boforo these inventions were
<L That Harrington and his privies aro estopped by 311
their conduct from churning that Edison remained
a partner bound by that agreement in 18 1 2-3.
d. That whatever its purpose, its ellect, or tho lime of
its continuance, the defendants had no notice of it,
and therefore tako their respective interests un¬
affected by it, or anything arising under it.
AS TO THE AGREEMENT OP 1871.
a. That its record does not chargo any person with
notice of its contents, that record being unauthor¬
ized by law. 812
b. That its contents being actually blown would not
liavo informed tho reader of the existence of or
charged him with notice of tho agreement of
1870.
c. That its own terms arc by express restrictions, ex¬
clusive of all matters and things not relating to
“fait " or automatic telegraphy,
rf. That the inventions in question aro neither a part
of last tolcgruphy, nor are thoy or can thoy bo
niado in any reasonable sense, “ applicable " to ait. 313
tomatio telegraphy mechanical printors.
e. Tho term 11 fast ” is defined and limited by tho usage
of the parties which is sufficiently proved. But, if
wo wore left to common rules of reasoning, it
would bo absurd to call the qundruplox “ fast."
Tho same modo of applying terms would mnko it
horse raco fast, in which twenty horses participated,
as compared with ono in which only two horses
run, though at much greater speed j or one railway
freight train fast, because it convoys fifty ears full Sid
of freight at fifteen miles an hour, as compared
with nuothcr which convoys ton cars full of freight
nt fifty miles per hour. This construction would
supply our great necessity of rapid transit by tho
easy mcniiB of filling the horse cars quite full.
Tho absurdity of this attempted construction ceases
only to be absurd when it is recognized as a part
of tho dishonest scheme, which has been patched
up to rob tho dofondant’s of their property.
and desired in a reasonable and probable sense,
and not in the sense which the witnesses show is
attained by applying the quadruples to the auto¬
matic system j that is to say, a slowing down of
its speed.
Tho strained, artificial and offensive construc¬
tion of the word "applicable1' put forward, would
1 make tho agreement of 71, read substantially,
“and I hereby, in order successfully and ceo-
“ nomicnlly to dovolop tho fast system, agree to
“ invent and convoy to tho promoters of that sys-
“tom, all methods of which I can conceive by
“ which its distinctive usefulness can bo ilimin-
" Med.”
g. That Harrington and his privies are ostopped by
their conduct from assorting now any titlu to tlieso
inventions.
VI.— It will doubtless bo argued that Exhibits A and B
operate as equitable assignments, Inking ell'uct ns such upon
the inventions as from titno to time they emorge into the
sphere of assignable things.
It is not disputed that nil equitable assignment of ,n dis¬
covery or invention may be made in ndvanco of tho dis¬
covery; although this is extending tho doctrine beyond any
reported case; tho most extreme of such reported oases
having still a condition of potentiality which docs not exist
bore.
Thus, an assignment of tho oil orwlmlcs to bo caught lias
for its basis tho fact in naturo that there tiro whales, and
thnt sufficient time and effort does always and certainly,
avail to catch them. But it is not at all certain that any¬
thing more remains to be discovered or invented touching
any particular subject ; or that any cortaiu person can by
any degreo of effort succeed in making such discoveries.
Equitable assignments have been easily sustained and
their scope extended by reason of tho fact that tho eases
havo usually arisen in such wav as to bind tho conscience
Tho courts havo usually, in declaring mu gu..u . .
that equity will sustain the assignment of expectancies
(Story’s Kq., 10-10, 1010/,), made more or less careful excep¬
tions in favor of public policy and the rights of third par-
Pennock d al, i
was a case of tho customary inoriigiigu uj » “ J “"'"i J
of future acquired property. In sustaining tho mortgage
tho Court, Nelson, j., said :
“The property in this ease (the locomotives and ears
“leviod on are articles specifically enumerated ; anil tin
“only uncertainty existing in icspect to them arises out o
“ their non-existence at tho date of the mortgage.
ii * * * * * The main argument urged against i
“is rounded upon tho maxim that a person cannot grant
“tiling which ho has not i Ue non hubd, non dat; an
“ inanv authorities are referred to at law to prove the propt
"ail ion, and many more might have been added from ei*
“in equity, Tor equity no more than law can deny it. m
“ thing itself is an impossibility. It may at once, the. efor
“bo admitted, whenever a parly undertakes by dual
“mortgago to grant property, real or personal, m praen
“which does not belong to him or has no existence, tl
"deed or mortgage as tho case may be, is mopei alive at
“void, and this either in a court of law or equity. B
» this principle has no application to the caso ueioro -.
ii sf « * * * The inquiry hero is not whether
“ person can grant m ,, me, iff property not belonging. ohn
"and not in existence, but whether tho law will Pcr ut
“ grant or conveyance to take effect upon the p«
“it is brought into existence and belongs to the > t «» o
« fulfilment of an express agreement founded on a good a
‘'valuable consideration, and tins when ?
“ infringed or right, of a third party
Trull os. Eastman, 8 Mete., 121, was a case ^ betw een
assignor of his expectancy in his ancestors estate and
Coe, 23 IIow., U. S., 117-127. This
itomnry mortgage by a railway company
tlio Court say ing : “And although the grantor or releasor
had not then the present right, yet tho subsequent acquisi¬
tion of it shall inure to the benefit of tho grantee ; or, in tho
bettor words of Lord Coke, ‘ The grantor shall bo rebutted
and debnrrcd when he afterward shall so claim against lus
own warranty.' "
In Lor.gton vs. Horton, 1 Hare, 550, Burney, n ship
owner, assigned four ships and their cargoes, and all oil,
head matter, or other cargo which might bo caught or
brought home in said ships. On tho arrival of tho cargo
the assignee obtained possession of it. and wliilo in his pos¬
session it was levied upon at the suit or an execution credi¬
tor of the assignor. Tho Yiec-Chanccllor, upholding the
assignment ns valid, to take cfl’cct in equity, referred (page
559-00) to tho fact that the assignee had loft nothing un¬
done to porfeot his equitable title, and said that a judgment
creditor who had not pnrted with his money on security of
tho goods stood in no better attitude than the assignor, and
said, 11 If tho asserted equitable title is not perfected, tho
“earliest claimant, in point of time, may be postponed to a
“subsequent claimant whoso title is equitable only— a ques-
" lion which I had to consider in Meuse vs. Bell ; and if tho
'equitable title of the earlier claimant is incomplete ns ho-
" tween himself and his debtor, the later claim, oven of n sub¬
sequent judgment creditor, ns well as of a subsequent
‘ equitable creditor, might perhaps in some cases prevail
"(p. 608). Tho oaso of Doe and Coleman vs. Britain, and
11 other eases similnr in principle, have no direct application
1 to tho present enso, hut they show that a creditor by judgment,
'proceeding in invitum, does not, in the view of a court of equity,
1 stand in that position in which he requires or receives the same
'favor as a purchaser whose right is enforced through the con-
'scienccof the other parly."
Field vs. Mayor, oto., 2 Sold., 180-7. In this ease tho
lourt nddod tho qualification that sueli assignments will
)0 sustained whoro "tho agreements are fairly entered
"established the principal that courts or equity will not
“uphold such assignments against any superior eonsulera-
“ lions, or even any equal balancing of considerations ; and
“it cannot bo doubted that had the point been suggested, tho
“court would have added « that such assignments will not bo
“upheld, where to uphold them it is necessary to set aside
“the equitable or legal title of innocent purchasers without
“ notice, and especially when the holder of the first equitable 328
» tide is guilty of laches in not bringing such notice to tho
"second purchaser."
Calkins us. Lockwood, 10 Conn., p. 277-288. Hus was a
case at law in which tho sale was of iron, to be produced
from a furnace then in possession and operation by the
seller, and tho sale was held good ns ngninst-not pur¬
chasers— but general creditors, and tho couit relied upo
tho fact that the contract had been completed befoio tho
levy of execution, by tho purchasers taking actual posses- 32(
sion of tho property, thus completing his title, and no equit¬
able rights of purchasers having intervened.
It is of course clear that tho general creditors of a
seller stand in no better position than tho debtor.
Mitchell vs. Winslow, 2 Story, C3B-17. This, again, was
a enso in which general creditors thought to resist the moil-
gage of things not in at the date of the mortgage.
Court, at several places in the opinion, is particular to n •
elude tho idoa that equitable interests havo m eivo , 1 3
as those of innocent purchasers or creditors, relyi g 1
the possession of tho mortgagor, and the Judge ) says pa e
030) : “ It is material here to state that the present is nc a
“controversy between a first and seeom mor gage
u Dortv ucn aired and in esse, after execution of tho firs mor
“ gag* and before the tiuieofthoexceutionofthosecondiwrt.
« gage both mortgagees being bona fide “
" abfo consideration, and the sljy01^ Jsa
“ tice of tiic prior incumbrance.
881 " question between tbo nssigneo of a bankrupt, noting for tho
“ bonefitof all tbo creditors, and tho mortgagee claiming title
11 under bis mortgngo * * * * (page 047). There is
“no protease of any fraud, either notunl or constructive. * *
n* * q'|10 mortgage was recorded. * * * * q’|,0
“creditors, therefore, were not allured by any false colors or
“ falso credit held out to mislead them. * * * * q'|10
“ law makes tho registration of the deed constructive notice
“ of its contents to all porsons, and since it was required to
“ be registered, and was registered, in conformity to law.”
882 Tito modern English doctrine, with a very important
saving clause, respecting tho identification of tho tiling
assigned, will bo found stated by Mr. Bcnjnmin, as follows:
“ It is well to observe that in equity a different rule pre¬
vails on this subject; and that a contract for the sale of
" olmltols to bo afterwards acquired, transfers tho bonofioial
“ interest in tho chattels, ns soon as they nro acquired,
“ to the vendee. The wliolo doctrine, with its in-
11 oidents, botli at common law and in equity, was twioo nr-
11 gued and thoroughly discussed and settled in tho easo
888 “ of Holywood vs. Marshall, whoro Lord Westbury and
" Lord Chelmsford gnvo elaborate opinions, concurred in
“ by Lord 'Wenslcydnlo, nlthough his Lordship’s first im-
“ pression had boon adverso to their conclusions. Tho
“ Barons of the Exchequer hold, however, in Bolding vs.
“ Heed (3 A. & C., 055 ; 84 L. J. Ex., 312), that tho doc-
“ trino of Holywood vs. Mnrshnll only applies to sttbso-
“ quontly nequired property when so specifically described as
“ to be identified."
Benjamin on Sales, p. 73.
834 VII— Tho introduction of tho equitablo doctrino of as¬
signment for protection of the bona fide assignees of ox-
pcctnncics, opens tho door necessarily to the introduction of
tho equitable doctrino of notice for the protection of inno-
eont purchasers in good faith without notice.
Granting, for the sake of argument on tho present point,
what for tho general purposes of tho easo we strenuously
deny, viz., that Exhibits A. and B. would, as between Edi¬
son and Harrington, havo operated as cquitnbio assign- 885
mcnls of tho inventions in question, we oomo to what is (on
this assumption) tho controlling question of tho c.iso, viz.,
TUB QUESTION OF NOTICE TO IIOTU PARTIES.
This equitablo doctrine of notice is an effort by jurispru¬
dence to enlist tho conscience of every party in aid of
the administration of jnstioo in tho particular easo. It
stands ns free from technical limitations and tho effect of
precedent, and, therefore, approaches ns near to a perfect
measure of justieo as any doctrine of the law. Although
its application has been found (ns must always bo tho easo 333
in administering unwritten law) to result in discovering
that tho same facts repeat themselves and thoreby in the
establishment of general precedents, nevertheless tho doc¬
trino remains to a large degree free and solf-rogulatiye—
the extent and method of its application to be determined
by tho facts of each easo. But one point in this doctrino
is dcfinito and unchangeable, and that is that good faith
is the solo criterion. Tho cases, therefore, will bo found,
without exception, to turn upon tho question whether tho
party sought to bo charged had such notice that his good 337
faith is impugnable when ho denies knowledge.
“Fraud or mala fides," said Lord Hardwioko in Lo Novo
vs. Lo Neve, “ is the trim ground on which the Court is
governed in cases of notice."
Jones vs. Smith, 1 Hare, 43; affirmed 1 Phillips, 214.
In this case, a party in advancing money on mortgage
inquired of tho mortgagor and his wife whether any settle¬
ment had been made upon their marriage, and was inform¬
ed that a settlement had been made, but it was tho wifos
fortune only, and did not include the husband’s estate, 838
which was proposed ns security. Tho lender was an attor¬
ney and afterwards advanced the money on the mortgngo
without having seen the settlement or known its contents.
It proved that the settlement included tho husband s pi op-
ci ty, which had been made the security. It was held that
the mortgage was not, under the circumstances i n he ted
with notice or the contents of the settlement or of the lad
that the settlement comprised tho husband s ostato. I '
839 also decided tlial though nogligcnco may, in some cases, bo
evidence of, it is not in all, the same thing ns multi files.
In this very instructive case, Wigrnm, Vice-Chancellor,
“It is scarcely possible to deelnro a priori tvhat
"shall be deemed constructive notice, because, tin-
“ questionably, that which would not allbet one
“man, may be abundantly sufficient to all'cct an-
“ other. Hut I believe I can, with sufficient accu-
“ racy for my present purpose, and without dan-
“ger, assert that cases in which constructive notice
8^0 " has been established, resolvo themselves into two
“classes ; first, eases in which the party charged
" lias bad actual notice that the property in dis-
"puto was, in fact, charged, incumbered, or in
“ some way affected, and the Court Itns thereupon
“ bound him with constructive notice of facts and
" instruments to a knowledge of which he would
" have heen led by an inquiry after the charge,
“ incumbrance, or circumstance affecting tho prop-
“erty, of which ho had actunl notice; and, sec-
811 “ondlg, eases in which tho Court has been satis-
"fled, from tho evidence before it, that tho party
“charged had designedly abstained from inquiry,
“ for the very purpose of avoiding notice.
“Tho proposition of Inw upon which tho former
“ class of eases proceeds is that the party charged
"had notice of a fact or instrument which, in
'• truth, related to tho subject in dispute, without
“ his knowing that such was the ease, but that lie
" 1,nd. ?olunl "otio° tlmt !t ‘I'J so relate. The pro-
“ position of law upon which the second class ofcases
" proceeds is not that the party charged had incau-
“ tiously neglected to make inquiries, but that lie
“had designedly abstained from such inquiries for
“ tho purpose of avoiding knowledge — a purpose
“ w,lioll> if Proved, would clearly show (hut he had
“ a suspicion of its truth, anil a fraudulent iletermi-
“ nation not to learn it. If, in short, there is not
“ actual notice that tho property is iu some way
87
it affected, and no fraudulent turning away from a 343
" knowledge of facts which the res gestae would
“ suggest to a prudent mind — if more want
“ of caution, ns distinguished from fraudulent oi
“wilful blindness, is all that can bo imputed to
“the purchaser— there the doctrine of constructive
“ notice will not apply ; there purchaser will be in
“ equity considered, ns in fact he is, a Iona file
“ purchaser without notice."
This important ease is cited with approval. Williamson 344
t is. Brown, IS N. V., 800.
Actual notico must consist in certain and definite informa¬
tion as distinguished from vngitu rumors.
Williamson vs. Brown, 15 N. Y., 354.
Such notice must, ns n general rule, come from some per¬
son interested in the property, or in giving tho notice, for a
purchaser is not bound to attend to representations by
strniigors.
Butler vs. Stevens, 26 Me., 484. ^ 345
City Council vs. Page, 1 Spear’s Kq., 159.
Kerns vs. Swope, 2 Watts, 75.
Bernhardt vs. Greenshields, 2 Eng. L. & Eq.,
77.
Bisphnm, § 208.
Although the assignee of an equity takes it subject to
prior equities, this rule applies only when the equities mo
in all other respects equal, and not whet, the equity of want
of notice is introduced to turn tho scale. The defendant, in
such n ease, has a right to avail himself of tho plea of being 340
a Iona file purchaser for value without notice, and if Ins
plea is true in point of fact, no relief can bo had against him.
Bisplmm’s Equity, § 204, and oases cited. .
Beckman t». Frost, 18 Johns., 544.
11 ’Whore there are two successive purchasers of tho same
“ equitable interest, tho second purchaser, according to tho
» authorities just eited, will take subject to the r.ghtsof tho
34:7 ii flrs^ On tlio other hand, there nro not wanting opinions
“ to the efl'ect tlint tlie nssigneo of a chose in action is only
n subject to the equities of the party bound by the oblige-
11 tion (the debtor), and not of those of prior assignees. The
11 true solution of tlio difficulty would appear to bo found in
“ correctly applying the maxim that between equal cqui-
11 ties, priority of time will prevail, the meaning of which is
11 that as between persons having only equitable interests,
“ if such equities are in all other respects equal, qui prior
11 est tempore, jwtior est jure. If there is nothin;/ eke in the
348 a case ifj jUrn i/ie SCalc, and the only fact before the Court is
“ tlio bald fact of priority of time, that, of course, will bo
11 conclusive. But, in prnctico, this is scarcely ever the ease.
11 It almost universally happens that two other questions
“ have to be tnkon into consideration — the question of
11 laches and that of notice. If the first purchaser has been
11 guilty of laches, his equity becomes inferior to that of tlio
" second purchaser, and the equity of the latter will then
“ prevail; for priority of limo is tlio lust ground of pretbr-
11 once resorted to, and will uovor be considered if there is
348 o nuything elso to turn thu scale. On the other hand, the
11 second purchaser may, under the i re e of thu par*
11 ticular ease, be in the condition to nvnil himself of the plea
11 of a Iona fule purchaser for value, without notice, mill it is
" now well settled that such a plea is available for the pro-
11 lection of an equitable ns well ns a legal title. Therefore,
11 in examining into the relative merits (or equities) of two
l’ persons having adverse equitable interests, the points to
" which attention must be directed are these : the nature and
11 condition of their respective equitable interests ; the ci'r-
350 ii cumstunces and manner of their acquisition, and the whole con-
“ duct of each party with respect thereto. If the inquiry bo
•' directed on tlieso grounds a decision on the narrow point of
11 priority of time will seldom, if over, bo found necessary."
Bispham’s Equity, § 171.
The principles of estoppel by conduct or equitable estoppel
nre simply stated in the following oases :
Wlicro a person knowing his own tide to property, oven 351
although covert or under age, encourages or even lies by
and permits a purchaser to buy it, equity will compel such
a person to convey to tlio purchaser.
Wendell vs. Rensselaer, 1 Johns. Ch., 354.
Belknap vs. Kevins, 2 Johns., 575.
Cheney vs. Arnold, 18 Barb., 475.
“ The rule that afl'ccts the purchaser is just ns
" plain as that which would entitle the plumtill
“ to a specific performance against Wood [who 852
11 had first covenanted to convoy to the plninthl'
“ and then to the defendant with notice]. If ho is
“ n purchaser with notice, he is liable to tlio snmo
11 equity, stands in his place and is bound to do
“ that which tho person ho represents would bo
“ bound to do by tho decree."
Taylor vs. Stibbcrt, 2 Yes., Jr., 480.
Lord Denman, C. J., said that tho doctrine of
Pickard vs. Sears might bo stated oven more 853
broadly than it was there laid down. “ A party,"
said lie, " who negligently or culpably stands by
11 and allows another to contract on tho faith and
“ understanding of a fact which ho can contradict,
11 cannot afterwards dispute that fact in an action
11 against tho person whom ho has himself assisted
" in deceiving."
Gregg vs. Wells, 19 Ad. and E. 00.
Monx vs. Boll, 1 Hare, 84. This was a ease of So4
contest between bona fide incumbrancers of certain
fU The Vice-Chancellor said : “ This is one of those
•' eases in which one of two perfectly innocent
11 parties must suller by tho fault of a third. *
ai « * Ji tho be eo of notice tie inrty
“claiming tho prior 1ncumbra1.ee has not per
“ footed his title. In a case where there cannot
12
90
91^
Sou “ 1)0 nn actual transfer of the subject, ho must do
"all that is in his power; if ho fails to do this,
" and another parson taken an inoumbranco and
11 gives notice, the second person has acquired a
"perfect assignment, whilst tho first cquitablo
" assignment is imperfect. A person who, being
“ himself the owner of property, or having nn
"interest in or claim upon it, stands by and
" sees another sell it as his own, without objec¬
tion, will not be allowed afterwards to assert his
85G "title, llis silence, when in good conscience ho
“ought to speak, shall close Ins mouth when ho
" would speak."
Sugden on Arcndors (Perkins’ cd.), p. 507,
note " W.”
" hi Marshall vs. Pierce, 12 N. H, 127, 138,
"Air. Justicu Gilchrist said: ‘This principle has
“ 1 been extended beyond the enso of a fraudu-
" 1 lent concealment of title, and applied to tlio
857 “‘case of one who was actually ignorant. of his
‘“legal rights; who could not, therefore, mako
“ 1 known his title at the time of tho purchase, but
“‘who has still been postponed in equity to a
“ 1 Iona fate purchaser. A very strong ease of this
“ ‘character is Ilobbs vs. Norton, 1 Verm, 180, of
“‘which Mr. Chancellor Kent says in Storrs vs.
" ' Parker, (1 Johns. Oil. 100-72-78, “ it was con-
““firmed in subsequent oases, and it has never
“ " been overruled or questioned.' "
358 Sugden on Vendors, pp. 607-8, note “ U.’1
plnintifl' had actual notice of the agreement
and part payment by tho Western Union and its agreement
with Edison ; and had constructive and actual notico of the
agreement of Aug. 19th (plaintiff's evidence, fols. 85-1, 1057,
1220, 1220, 1828, 1889, 1082-41, 1553, 1607, 120-1-8); the
paper being properly recorded (Itev. Slat., 4895), (defendant's
evidence, fol. 205-208), and its existence made known to
Gould, its agent, and to Harrington, its assignor.
IX. — By the agreement of Aug. 19th it was advised that 359
Edison hold his interest in theso inventions, and would
hold his interest in tho letters patent, as joint assignee under
a conditioned title, the inherent limitations of which were
such, that (in equity at least) ho had nothing to convey ex¬
cept upon tho condition precedent of Prescott's consont
Sec Exhibit, Opinion of Thachor, Com'r.
Such a condition intoiidcd to prevent destruction of tho
monopoly by separation of tho title, is strictly in accordance
with the policy of tho law creating that monopoly. 360
Leather Cloth Co. vs. Lorsont, Law Hop. 9
Equity Cases, 854.
Mnlins, V. Ch. “The principle is this: Public
“ policy requires that every man shall lie nt lib-
“ erty to work for himself, and shall not be at lib-
« erty to deprivo himself or tho state of his labor-
“ skill, or talent, by any contract that ho enters
“ into. O11 the other hand, public polioy requires
“ that when a man has, by skill, or by any other aul
“ moans, obtained something wliioh lie wants to sell,
■ “ ho should bo nt liberty to sell it in the most ad-
“ vnntngcous way in the market ; and, in order to
“ enablo him to sell it advantageously in tho mar-
" kot, it is necessary that he should be able to pro-
» elude himself from entering into competition
“ with tho purchaser. In »ncli a ease, the samo
" public policy that enables him to do that, does
“ not restrain him from alionnting that which ho
“ wants to nlionnto, and, therefore, enables him to 862
“ enter into any stipulation, liowovor restrictive it
“ is, provided that restriction, in tho judgment of
“ tho Court, is not unreasonable, having regard to
“ tho subject-matter of tho contract.
Grigg vs. Landis, 4 C. E., Green, 850. Defend¬
ant gave E. a bond for title, acknowledging pay¬
ment of first part of consideration, providing for
the payment of tho bnlanco by instalments, and
that if specified improvements woro not made
within a tune named, the defendant might take
back tlio property on refunding tho payments
made. The bond contained a provision that F.
should not assign tho contract boforo tho improve¬
ments and payments were completely made, 'l’ho
plaintiff took an assignment of the contract before
such performance, and having completed the im¬
provements sued for a specific performance, after
the defendant had tendered tho instalments paid
by F.
Ileld : That tho conditional proviso against ns.
signment was a valid and good dcfonco to the suit.
Opinion. “ Tlioro is nothing inequitable in tho
11 provision tlint until all arrears are paid up, and
“ all stipulations complied with, the contract shall
11 not bo assigned even in equity. It must bo held
“ therefore, that tho assignment made in express
violation of the contract is void and tho complainant
claiming through such assignment is entitled to no
relief in equity.
Note. — This enso was reversed on tho ground
that tho provision was inserted fora purposo which
has been substantially attained.
0 0. E. Green, 510-511.
A limited covenant not to assign — as hero tho
mutual proviso not to assign except on the consent
of the other party — will bar a bill for specific per¬
formance brought by an assignee.
"Weatberall vs. Georing, 12 Yosoy, 511.
Grant, M. It.: “ Whnt is tho affect of an agree-
“ meat to assign, whero the lease is not assignable,
" without heenso of the landlord 7 If tho land-
11 lord does not give tho license, tho agreement
“ cannot be carried into execution. Tho lessee may
“ subject himself to an action, but that is all. A
“ court of equity canuot consider that as done
.. which, if done, would extinguish the very sub- 367
‘I jeet of the contract.”
« if be chooses to deal with that partner in a
» nor beyond his authority, as restricted.
1 Lindley Partnership, 2d Eng. cd., 333,
citing Aldcrson vs. Pope.
1 i ml in Pivor of the partners and tho
‘•convoyed, and in r.ivor °i w 1 , r
“ superior to those held by the veudo .
BlgiraDOTiSlr.SM"";"”'.887'
Doxiem Carr, 1 Sumner, 17-1.
Tnlmadgc vs. East River Bank, 20 X *•.
■\Vc»tern w. MaoDermott, L. IV, 2 Oh., 72.
s:^a&5r»~
Co., 11 Gray, 301, 300, 807.
■"s 11
othor clauses regula ng naninst building
adjacont proprietors, a hcld l0 be such a
above a certain height, tins
restriction upon the title ns would bind a purchaser
with notice,- and entitle him to refuse to complete
his purchase.
Jeffries vs. Joffrics, 117 Mass., 189.
The Court say : “There was nothing to indicate
“ that it was intended as a personal right reserved
“ to (the grantor) and her heirs to defeat the con-
“ veyaneo upon a violation of its terms. That it
“ was introduced in the deed by the technical
“word 'provided,' does not make it necessary to
“ givo it a technical meaning and olivet, if the
“ context and general purpose of tlio deal indicate
“ that it was not so intended (Chapin vs. Harris, 8
“ Allen, 189). It is only by taking it out of its
“ literal connection and form, and regarding it in
“ its relations to tho whole scope and subject
“ matter of tho conveyance that effect can be
“ given to it in a reasonable manner according to
" tho apparent intent of tho appointee."
Morse Twist Co. vs. Morse, 103 Muss., 73.
A covenant cannot be in restraint of trade which binds
a selling patentee to do his best to make further improve¬
ments in tho invention, and not to aid any competition in
the business. Tho I'uturo inventions, if patentable, would
bo secrets, nud “ the public has no rights in the secret."
The Court say : “ Although tho defendant
“ (patentee) did not technically become a partner
“ with the plaintiff’s, yet ho became the associate
“of tho other stockholders in the business, ho
"himself inducing them to join him in it, and lmv-
" ing a large interest in tho formation of the com-
“ pany ; and the same principle that enables a partner
“ to bind himself to do nothing in competition with the
“firm ought to bind him (p. 75).
“Tho defendant eould not hnvo obtained the
“consideration which was paid him, if it had been
“understood that this contract, which he has vio- 375
“ luted, had no validity. Ho is appropriating to
“himself a part or that which ho has sold to the
“ plaintiff’s, and which is valuable to thorn, «
“ unlike the eases where tho prohibition extends
“beyond what the interests of the pure ..user re-
“ quire, or is in any way unreasonable. he Court
II aro of opinion that tho contract is valid (p. 77).
Thcro is nothing contrary to tho policy of tho
laws favoring trade, in a covenant °r condition ^
not to sell or assign without liconso ol a particular
individual.
Whore a lease contains n provision against assign¬
ment without tho landlord’s lico sc tl e restrictio i
passes with tho interest, as an essential part of it,
even at common law, in the form called a cov¬
enant running with tho land.
Williams vs. Earle, Law Hop., 8 Queen’s
Bonoh, 749. ^
Opinion. _ “ It is an express covenant as to who
“ shall use and occupy tho land and it is insorted
“ with a view that tho landlord shall not be dc-
“ prived of a voico as to who shall bo substituted
“ for tho original lessee in tho possession of tho
“ landlord’s premises."
This is clearly tho general purposo of such a
covenant, that unless some further and special in¬
jury is alleged, an interlocutory injunction agninst
its breaeli will not be granted. 8'
Dyko vs. Taylor, 8 DeGox, Fisher vs. Jones,
407, 474.
Whore tho Court puts its refusal on this express
ground, saving: " No landlord inserts a cove, inn
“ against tho tenant assigning the lease, except for
“ the purposo or assuring to himself the selection
" of the person to whom tho lease shall bo ns-
lie agreement with tho Western Union Co. is void under
lie statute of frauds seeing scarcely to require serious an-
The contract was for work, labor and service.
The engagement to assign patents would have been per¬
fectly performed by assigning the inventions before patents,
or in other words the substantial part of tho agreement in
that respect was simply to put tho W. U. Co. in a situation
in which it could, if it chose, obtain a monopoly from tho
Government in tho use of the inventions which it omploycd
Edison to make.
It would bo difficult, indeed, to bring this within tho
terms of the Statute of Frauds. The language of the case
cited below is not to bo limited to the terms of the statuto
of Massachusetts.
11 The words of tho statuto have never yet boon
11 extended by any court beyond securities which
“nro subjects of common salo and barter, and
" which liavo a visible and palpable form. To
"include in them an incorporeal right of fran-
"cliisc granted by the Government, securing to
“ tho inventor and Ins assigns the exclusive right
" to mnke, vend and use tho article patented, or a
“ share in that right which lias no sepnrato and
" distinct existence at law until created by the
" instrument of assignment, would bo to unrea-
“ sonably extend tho moaning and offect of words
“ which already liavo boon carried quito fur
11 enough."
Somerby vs. Buntin, 118 Mass., 870.
Charter vs. Dickinson, 6 Man. & Gr.
Prescott vs. Locke, 0 N. E., 94.
Binnoy vs. Annan, 107 Mass., 04.
XI. — Tho judgment should bo for tho defendants, upor
the findings of fact and conclusions of law herewith sub
milted, substantially.
N.Y. SUPERIOR COURT,
CITY AND COUNTY OF NEW YORK.
THE
GEOEGE B. PEESCOTT and
THE 'WESTEEN UNION TELEGEAPII
COMPANY.
ARGUMENT
GROSVENOR P. LOWREY, Esq.
CITY AND COUNTY OF NEW YORK.
The Western' Union Telegraph
Company, George B. Prescott |
and others.
ARGUMENT OF GROSVENOR P. LOWREY, Esq.,
FOR THE DEFENDANTS.
If your Honor please :
At tho close of so long a trial, tho testimony in which
covers more than 1,200 printed pages, it is a common cause
of congratulation that tho dilliculty of disposing of this
case, to tho Court or the counsol, is not nt all commensurate
to the time occupied in producing tho proof. There are
but fow questions upon which counsel aro likely to dispute.
About tho questions of law to bo applied wo cannot greatly
differ. Upon tho manner and degree of their application
we shall differ a little more, but still not much. As to a
fow questions of fact of course tho difference is absolute.
Tho plaintiff appears bororo you in tho posturo of a peti¬
tioner for tho enforcement of an asserted equitable right.
Such rights aro always, ns an essential condition, based
upon morality and conscience, and lack some extrinsic cir¬
cumstance necessary to give them technical legal form. They
aro usually assorted against some clear legal right to the
same thing, which tho claimant declares to bo however in¬
equitable, “notwithstanding its perfectness of legal form
The actor in an equitable forum, who puts forward an im
perfect right to overcome a perfected right, upon the ground
that the 0110 is equitable in substnnco though not legal in
form, while 'the othor though legal in form is inequitable
in substance, holds his standing in Court upon tho doublo
conditions that his cause of action shall bo just and his con¬
duct in all matters touching it upright and decent. In
tho words of tho maxim lie must cornu into court with
clean hands. I understand that this plaintiff is hero bound
by nil the obligations which over attach to such an actor in ,
such a forum. J
In discussing tho legal questions of this case, it will bo jj
suitable that this plnmtiiT should be spoken of ns wo cus- 1
tomarily speak of one who maintains in good faith a cause i
of action which, however mistnkonly, it believes in honestly •
and which is therefore entitled to tho consideration duo to
honest suitors.
Your Honor will not understand this respectful treatment
ns implying any concession that it is deserved. Our opinion >
has already boon clearly made known that on the contrary, I
from being fair and honest, tho titlo introduced and sought
to bo palmed off here is a dishevelled, ragged Hebert
Mncairo— dressed up in all tho patches of the scrap-bag—
called one name to-day and another name to-morrow ; nn
imposture in its inception and a fraud in all its parts;
the whole constituting a kind of Tiuhbornc enso in equity.
In discussing the facts we shall not conceal this opinion,
but shall boldly urge it, in confident expectation that tho
Court will be irresistibly led by tho facts to the same con¬
clusion.
'llio plaintiff says, in the language of the law, that it is a |
bona fide purchaser, for a valuablo consideration, without
notice of tho rights of the defendants, of certain inventions. \
Iheso inventions, which arc not yet patented and may I
never bo patented, give to the owner, whether he bo tho
inventor or his assignee, only the right to petition tho ‘
Patent Office to obtain that monopoly which tho law awards ■
to the merit of inventing or of discovering new and useful 1
things. The property right involved is, therefore, somewhat ii
peculiar in its character, It is not a definite thing, capable I
of customary barter and sale. Questions of intorest will
arise from tho peculiar character of this proporty.
This claim of tho plaintiff is supported, as to tho titlo
itself (without now referring to that element which is requi¬
site in it to make it a good titlo as against us, that is to say,
the absence of notice to, and tho payment of consideration
by them), upon two certain agreements, of 1870 and 1871,
with which your Honor is familiar.
It is said that Mr. George Harrington, in 1870, made an
agreement with Thomas A. Edison, by which Mr. Edison
bccamo bound in equity to convoy, and secure in what¬
ever was tho appropriate manner, to Georgo Harrington a
two thirds interest in all tho inventions which might bo
made by Mr. Edison nffeoiing olectric telegraphy. It is said
also that in that agreement, tlioro was secured to Mr. Barring- ■
ton certain control over tho remaining interests of Edison in
tho same things ; and that subsequently, in 1871, another
paper, intonded to carry into more complete effect the terms
of tho agreement of 1870, was executed by Mr. Edison and
delivered to Mr. Harrington ; and that, undor those two, Mr.
Harrington was entitled on tho first of January, 1876, to an
intorest in theso inventions, which was exclusive of all othor
interests. That interest, it is said, bus been conveyed by
Mr. Harrington, noting for himself in his own intorest and
for Mr. Edison, ns his attorney, to Mr. .Tay Gould, by an
assignment bearing that date. I beliovo that to bo a fair
statomont of tho claim which is mado upon tho othor side •
ns to the titlo derived by it from Harrington.
No consideration 1ms boon shown as having been paid by
Mr, Gould, unless tho questionable item of $5,000, testified
to by Mr. Morosini, is applicable to that transnotion. Abso¬
lutely no consideration is shown to lmvo been paid by tho
plaintiff when it took titlo from Gould.
It is also claimed that Mr. Thomas A. Edison was, on tho
fourth of January, 1875, competent in law to convey somo
interest— whatever ho had remaining— in all inventions of a
certain character, which are involved in this suit, and that
he did on that day, for the consideration of thirty thousand
dollars paid to him by Mr. Jay Gould, deliver to Mr. Gould,
not a conveyance, but a power of attorney to make a eon-
voynnce in the nnmo of Edison ; and tlmt subsequently, fol¬
lowing that authority, Mr. Gould did pass to this plnimifl,
on tho eleventh day of January, 1875, tho interest, whatever
it may be, which Thomas A. Edison at tlmt time had in
these inventions.
It should be remarked that tho conveyance to tho
Atlantic and Pacific Tolcgraph Co, of tho titlo de¬
rived from Mr. Harrington, by his agreement purport¬
ing to have been made on tho first of January, did
not pnss from Gould to tho plaintiff until July, 1875, nt
which time thoro had taken plaeo certain changes in tho
organization and personnel of tho Atlantic and Pacific
Telegraph Co., vory important ns affecting tho question of
notico to the plaintiff and good faith in its notion — especially
tho election of Eekort, President, and Gould and Mills
directors (lols. deft, 072), to which I slinll prcsontly call
attention.
That being tho claim of tho plaintiff, it appears that this
thing which it says it owns, 1ms boon elsewhere, that is in
tho Pntont Office, decided to belong to other poisons ; and
upon tho assumption that that decision— though it may
bo correct in law, alone— is not binding in equity, this suit
has been brought to restrain tho persons thus hold to be tho
legal owners of tho invention from receiving letters patent
for them. To this is joined a prayer that the Western
Union may bo enjoined from setting up any claim to those
letters pntont undor certnin agreements heretofore made by
it with tho persons thus officially recognized as tho owners.
Such being tho nttitudo of tho pnrtics before tho
Court, and such the remedies sought, it becomes necessary
to consider tho facts and tho principles of law within wliosu
operation the case is drawn.
I think it will bo a moro intolligiblo and convenient
method, and likely to devolop tho exact truth moro com-
prohonsively and accurately, if wo endeavor in this discus-
sion to realize the facts as nearly as possible, both in their
order and in tho value of their sequences, just as tho de¬
fendants realized them from tune to time. I shall there¬
fore begin with ourselves; with our first knowledge of
Edison and these inventions,
| 1
I call your Honor's attention to tho month of February,
; 1878, which saw the beginning of our connection with these
inventions.
In 1873 Mr. Edison wns well known among persons in¬
terested in electrical soieneo and tho business of telegraph¬
ing, as a man of ingenuity, industry, and of a good deal of
success in making inventions of various sorts.
In tho language of the Commissioner of Patents, who had
occasion to pass upon these questions, Mr. Edison was an
inventor so industrious and constant in his applications to
tho Pntont Ollico that ho kopt the pathway to that olfico
hot by his footsteps. He may bo supposed to liavo boon
generally known to rill people engaged or interested in elec¬
trical mnttors ns a universal gonius, likely to have a great
a variety of inventions to sell.
: Tho Western Union Telegraph Company wns nlso woll
known ns a corporation engnged in tho general businoss of
; sending telegraphic messages, and naturally as a customer for
I whatever wns now and useful to improve, or in any way
I beneficially to affect that businoss ns carried on by it
i Thoro wore in oxistonco at tlmt time other companies en¬
gaged in similar business, one of whom was tho plaintiff.
| Tho method chiefly, and, indoed, I may say, exolusivoly in
f uso for practical purposes, wns tho method known ns tho
Morso method, and which my friond and associate, Mr.
Dickerson, has gonorieally tormed tho “ electro-magnetic
motliod."
Thoro wns also, ns wo now learn, in existence at tho timo
an association of gentlemen composed of Mr. Boiff, Mr.
Harrington and othors, who, undor the various names of
“ Harrington nnd Associates," “Automntio Telegraph Asso-
i ciation," 11 Tho American Automatic Telegraph Company,"
\ etc., noting sometimes ns a corporation nnd sometimes in
their privnto capacity, had been engaged in experimenting
upon nnd exploiting n new method of sending messages,
which has been spoken of day after day ns tho “Automatic
method," nnd which was, at that time, quite ns frequently
designated by its friends by tho epithet “ fast ” method, which
nptly indicated wlmt they considered its chief merit: that is,
: the great rapidity by which it could sond nnd receive olectrio
Signals. It is the method known among scientific men as
the “ chemical " method, os distinguished from the 11 electro¬
magnetic " method. These companies and associations, how¬
ever, meritorious m their constituent elements or tlieir pur¬
poses, had not, at that time, ns I suppose it will bo agreed,
attained to a point in public confidence which enabled them
to compete seriously with the Western Union Company. In
short, the Western Union Company was at that time prne-
Thus it appears that wo have in 1878 a subjoct of special
interest to telegraphers, and of general interest to tho
public, openly and largely discussed in tho newspapers
and in public documents. At tho samo time wc have an
inventor, generally known, ns it must bo assumed, to all
telegraphers as a man of special ingenuity, great industry
and success, and of tho widest range of inventive power,
devoting himself specially to electrical science. Wo linvo
ness of the country, and was naturally tho best, most profit¬
able and most likely customer for tho purchase of any and
all inventions affecting telegraphing by tho Morse method.
At tho same time it was believed by many persons, includ¬
ing Roiff and others who linve testified here, that the Monte
method had reached the utmost of its usefulness, and that
tho automatic or chemical method was about to come into
use under circumstances that would enable tho poisons using
it to telegraph with vastly greater rapidity and more
economy than by tho old Morso method. Inasmuch ns tho
controlling devices used in tho chemical method wore pnt-
ented or patentable, nnd could bo used by their owners to tho
exclusion of tho Western Union Company, the association
owning theso doviocs was necessarily, in its designs, hostile,
m a business sense, to tho interests of the Western Union
Company. If successful in realizing their hopes for tho au¬
tomatic method, they would be ablo to affect seriously tho
vast property nnd interests of the Western Union Company.
It was natural, therefore, that there should bo a good deal
of public nnd privnto discussion, argument, sparring, nnd oven
boasting upon the respective morits, or elnims of merit of theso
two generic methods. It has been shown to your Honor that
even the Postmaster-General of the United States thought it
worth his while, and not unbecoming tho dignity of his high
place, to make this subject tho occasion of nn official com¬
munication to the Congress of tho United States, in which
he vaunted tho supposed merits of the automatic system,
an i not seruplo to indulge in personnl reflections upon
the management of private corporations, and the conduct of
private persons in conducting tho private business of tele¬
graphing.
nlso one corporation moro largely interested than all others
in tho general business of telegraphing, nnd specially-inter¬
ested in maintaining nnd in proving tho value ami efficiency
of tho Morso method, for tho operation of which it had in¬
vested largo sums of, monoy. instructed great numbers of
operators and other servants, nnd rnised up great establish¬
ments. Tho thoughts nnd purposes of tho Western Union
Company may well bo assumed to have pointed in tho
direction of preserving tho valuo of- its present property,
by adding such improvements ns would make what it pos¬
sessed already more valuable without requiring tho addition
of any now system, or tho abandonment of old methods of
business then in profitable operation. Wo now know (al¬
though from nil which nppeni-s in ovidcnco this was not
generally known at that time, nor known to tho Western
Union Company or its officers) that Mr. Edison had been
giving considerable and very olVcctivo attention to tho art of
sending messages by tho chemical method, nnd had been
interested by Harrington nnd others to devise for them tho
means of overcoming difficulties in that method. Wo now
know that he had boon at work for them under cot-tain
definito understandings, no ono of tho torins of which
is. in our opinion, however, such ns to limit Edison
in his freedom to contract with us, or to make for
ns tho inventions in question hero. However that
may be, in February, 1878, tho oxistonco of these under¬
standings or arrangements boing unknown to the Western
Union Company, or any person engaged in its business,
Mr. Edison applied through lus friend Mr. Miller to Mr.
Orton, President of the Western Union Telegraph Com¬
pany, for employment. Ho know that tho Western Union
Company was tho owner of, and was then operating an en-
to
tircly now system of sending messages by tlio olcctro-mag-
notic method. This new system lmd been named tho
“duplex," because it transmitted two messages in opposite
directions at tho same time over one wire. It was attract¬
ing, of course, much attention, and was the invention of an
ingenious gentleman named Stearns. It clearly appears in
tins case that tho Western Union Company considered that
tho possession of a monopoly of the duplex system gave
them all tiie advantage requisite to overcome any improve¬
ments likely to be niado to tho automatic method. Sir.
Edison's application had special reference to duplex inven-
tious which lie thought ho had made, or improvements
which ho thought lie might tnako upon Sir. Stearns' inven¬
tion. It seems ho was not chary in oxpressing, however,
his contempt for tho duplex system, and his confidence that
it could not bo compared in value to his completed or con¬
templated improvomonts to tho automatic system. All
this, however, was of little importance to him, his object
being to obtain employment in making such inventions as
Ins oustomor might desire.
Sueli had boon tho communications of Sfr. Sfillor on
behalf of Sfr. Edison to Sfr. Orton, that on tho Oth day
of l'obruary, 1873, ho induced Sir. Orton to authorize
linn to say to Mr. Edison that he was willing to see
and treat with him for duplexes. Following this inti-
mation, on the 15th of February or thereabouts, Edison
called upon Mr. Orton, having prepared himself for tho
interview by putting upon pnpor exemplifications of tho
devices which he thought ho could tnnko useful in duplex
telegraphing. That paper is Exhibit 0, and consists of a
number of drawings of duplexes, nono of which, ns I am
instructed, appear substantially, or to any degree worth
mentioning, m the inventions which Edison afterwards per-
fee ed, and which are hero m question. In certain general
and, perhaps, in some special particulars of value, tiiorc is a
sinnlmity between those drawings and some of these inven-
ions. I shall, however, assert in general terms, leaving it
ri ’lw^vT C°Tel U>’on 1,10 ^de and my
1 ‘ r ■ D'ckerson' tlmt die devices and things shown
on Exhibit 0 are not the devices and things for which
the plaintifl and defendants nrc hero contending, and that
tho special things now in controversy arc clearly shown
by intrinsic and extrinsic evidence to have grown out of
and resulted from the negotiations and arrangements of
February, 1873. These negotiations and arrangements re¬
sulted directly in uniting to the work of Edison the facili¬
ties and encouragement of tho defendants, the Western
Union Telegraph Company, and finally tho special help of
Prescott, and all those cooperating, the • duplex" inven¬
tions of Edison resulted. To what degree each one of these
aided Edison in rcnching practical results which before lio
had failed in (fol. 812), no ovidenco in this caso enables us to
say. Tlieso joint contributions of labor, effort, materials, facil¬
ities and pecuniary expenditure continued from February,
1878, until December, 187-1.
During February, 1878, at interviews had on two or threo
daysin that month, Mr. Orton and Mr. Edison conferred gene¬
rally mmii tho largo subject of improvements in telegraphy,
discussing, doubtless, tho respective clnims of the two systems,
but particularly, sinco that was tho serious matter in mind,
they discussed improvomonts to tho Monte method by tho
duplex, and improvements upon tho duplex of Stcnrns, then
inoperation. It was then that, in the face of Mr. Orton's strong
dosiro to have the duplox improved, Mr. Edison continued to
treat all his ideas about tho duplex with tho contempt of a
genius for tho cold and colorless ideas of a business man.
lie said, “ I can make them by tho bushel." Mr. Orton said,
“ Please do mako them by the bushel, and I will buy all you
Notwithstanding tho natural aversion of tho human
mind to admit former errors, I. think it will not bo dis¬
puted now that Mr. Orton was entiroly right in his judg¬
ment, and that Edison’s farno will rest sccuroly upon his
duplox when tho amusing but useless automatic is forgotten.
Whatever may bo tho result of this case in otlior respects,
I think it is definitely sottled that the automatic system,
about which there was at the timo so much liopo, expoeta-
tior a d 1 o St t I s 1 1 lived a worthless toy.
As tho general result of tho various talks between Mr.
Orton and Mr. Edison, a conclusion was renohod, and in
12
order tlmt there mny ho no mistako upon this important
point, I now refer to plaintiff’s testimony, and read from tho
evidcnco of Mr. Edison at folio 020, plaintiff's evidcnco :
“ Q. Did you not see Mr. Orton in consequence of that
letter, and very soon after that? A. I think I did.
"Q. You accepted tint invitation and saw him? A. I
think so.
“Q. Did you not then make an agreement in substance this,
that you would go on with tho Western Union Telegraph
Company and develop certain conceptions and inventions
that you had in duplex telegraphy, and when they were
done and patented, that the Western Union Tolegraph
Company should own them by paying you such a price as
you and that Company should agree upon, and if you could
not agree upon it, then that an arbitration should settle it,
and they should own tho patents ?"
After objection the witness answers:
"• 1 “link wo had such an understanding by tho voice.
“Q. An oral contract or understanding? A. Yes, sir.
“ Q. And at tlmt time did you not deliver to Mr. Orton a
little book or file — a paper— containing tho different duplex
inventions, upon which you proposed with him, and he
agreed with you to go on and make experiments and develop
them? A. Yes, sir.
“Q. Is Unit it? [Handing paper to witness.] A. Yes, sir.”
I npw turn to pngo 280, folio 000, at which the witness,
referring to tho payment- of money on account, and which
ho was endeavoring to mnko out (in support of an tin-
suppoiUblc allegation of the complaint), was not paid for
theso inventions, but wns paid an account of certain instru¬
ments ordered, lie answorod :
II A. Tlmt money wns not given on account.
“ Q. I do not ask about tho money. The agreement of
February, 1878, between you and Mr. Orton, wns nover re¬
voked at that time, wns it? A. No, sir."
That time was December 10, 1874, when he received tho
$5,000.
I turn to pngo 829, where upon ro-oxaminntion Mr.
Edison wns interrogated by counsel for tho plaintiff in
respect to this evidently dangerous point of a method— pro-
i! is
| vided at tho time— lor fixing tho compensation to ho paid
1 in case they should disagree. He wns asked, at folio 1,142,
“ Was anything said between you and him ut that time
about an arbitration, in caso you and ho could not ngreo as
to tho price? A. I do not remember that”
Your Honor, if I may be permitted to interrupt tho rend¬
ing hero, will recall tho manner of Mr. Edison upon tho
stand. He was designated by Mr. Wheoler during tho
] trial as a very literal witness.
5 “Then you do not romombor whether anything wns said
j about arbitration or not? A. No, sir."
£| When Mr. Edison came to bo interrogated again upon
: re-examination, at pngo 887, folio 1318, this is what was
.'■! said :
; | 11 But you and Mr. Miller afterwards did have several in-
. torviows with Mr. Orton in regard to your propositions,
i which Mr. .M illcr, acting for you, wns to mnko to Mr. Orton
for arranging botwcon you and Mr. Orton about going
on with experiments in duplex? A. Yes, many a time.
I “Q. You wore asked this question by Mr. Wheeler, speak-
j ing of tho interviews that you had with Mr. Orton about
tho 0th of February, after that letter of his to Mr. Miller,
‘Was there anything said botwoon you and him a t that
time about arbitration, in easo you nnd ho could not agree as
j to tho price?’ nnd you said, ‘I do not romombor that.’
| Now, was there anything said on tho subject between you
,3 at any other time than that? A. I have an indistinct im¬
pression tlmt some timo Mr. Orton said to mo, ‘Wo can
fix it somehow ; if we cannot ngreo I guess wo can refer it
! to arbitration nnd I cannot state where that wns.
“ Q. Then wns there not also an agreement botwcon Mr.
Orton and Mr. Phelps, in which, if Mr. Pliolps did certain
things, ho wns to bo paid as they might agree, or ns tho
j arbitrators might fix in easo of disagreement? A. I don’t
know that."
Now upon this point there were three witncsscs-two
witnesses to tho fact nnd ono to the admission of tho fact.
Mr. Orton wns called and examined, nnd I now read to your
Honor from tho defendant’s testimony, at page 117. I
Idl'd witnoss, who testified to the admission, was Mr. .Pros-
ott, who says that a certain time previous to his coming
nto relations with Mr. Edison, and when Edison complained
hat ho was not sufficiently helped, Mr. Orton called him in
ltd explained to him in the presence of Edison the whole
f this arrangement, as stated by Mr. Orton.
At folio 401 —
“The Court: Givo tho substance. I suppose it will be
npossiblo to attempt at this late day to givo tho oxnct Inn-
ttage, but relato it ns near ns you can recall it.
11 A. Mr. Edison treated in tho conversation tho business of
taking duplex ns a very trilling nllhir. Ho said ho could
inko mo a dozen, and I think ho said lie could make mo a
tishcl, and that they wore of no sort of account partioulnrly.
said, ' Very well ; I will take all you can make, a dozen or
bushel.’ Part of tho conversation was in tho manner of
ndinngo of that sort, and then wo came to tho serious bits!-
ess nspcctof it; ho had appeared to suppose that ho should
void any infringement of tho Stenrns patent. I assured
im, for my purpose, that that would bo just as valuable, in
ty opinion, if ho could make improvements upon tho
learns, which could bo successfully used without infringo-
lent of tho Stearns, ns to make independent inventions.
lijj the Court :
“ Q. Hid you say that your company owned and controlled
to Stearns palont at that time?
11 A. Yes, sir ; at that time wo wore using it, as wo thought,
try successfully. Wo canto to tho question, after that, in
sped to tho modo of settlement concerning any patents
at ho could bo ablo to obtain, and turn over to us relative
this subject Tho conversation was explicit ns to this, that
) was to go on and make all tho inventions ho could, and got
1 tho patents lie could, and turn them over to us and assign
etn to us; that ho should receive such compensation ns we
and in that case reforonco wns mndo to tho fact that our com¬
pany had a contract in force at that time with Mr. George M.
Phelps, one of our employees, providing for having tho com¬
pensation for till patents for telegraphic inventions, m the
event of disagreement, fixed by arbitrators.
" Q. Go on and mention wlmt wns said which you can re-
membor — what you said and what ho said on that occasion.
A. I do not remember anything more particularly. I should
add, however, that in tho coursa of tho conversation it was
stilted that bo would require an opportunity to uso tho wires
to test his ideas, to exploit thorn," oto.
At another place (fob 478), his attention boing called to the
matter, M r. Orton says that either at that time or immediately
after Mr. Edison made various requirements for tho carrying
on of these experiments, such as Mr. Orton know would ho
necessary; tho thing may or may not have boon men¬
tioned at that time, but whenovor tho domand was made it
was complied with, and tho Western Union Telegraph Com¬
pany entered upon tho full performance of this contract by
giving all that it had promised to give, and all that tho
necessities of the easo required, or that Mr. Edison over de¬
manded. It is not intimated anywhero in tho easo that there
hns boon any failure on account of tho Western Union Tele¬
graph Company to give all that it was required to givo. It
is said that Mr. Edison, during tho summor of 1878, did not
think that ho got tho kind of cooperation from tho em¬
ployees of tho company that wns necessary. Ho did not com¬
plain that they did not eouporatc heartily ; but, this being
brought to tho attention of tho ollicors of tho company, they
immediately brought m tho olcetrician and tho gonoral
superintendent, and ho wns provided from that timo with all
that he required. At jingo 132, folio 627, Mr. Orton’s atten¬
tion wns brought to a question which I had omitted to ask
in tho regular course of tho examination.
“ Q. I will ask you one question which I omitted in the
course of my examination upon a previous point, and I will
nut it now. I call your attention to tho period when first
17
18
fix upon the' price you would lenvo it to competent arbitra¬
tors, etc., wlmt did Mr. Edison sny? A. He assented, but in
wlmt form I do not now remember.
“ Q. It was from the day that bo assented to tins proposition
that the work wont on? A. Yes, sir,
11 Q. Now, going back to tlint letter — that is a letter of Mr.
Edison to Mr. Prescott? A. Yes, sir.”
Upon tlio snmo subject I read also from tlio testimony
of Mr. Orton, defendant’s evidence, folio 104:
“ A. Mr. Edison treated in tlio conversation the business of
making a dupiox as a very trifling affair; ho said bo could
make mo a dozen, and I think bo said bo could make mo a
busliol, and that they wero of no sort of account particularly, j
I said, 1 Vory well ; I will take all you can make, a dozen or
a bushel.’ Part of tlio conversation was in the nature of
badinage of that sort, and then wo came to tlio serious busi¬
ness aspect of it ; be bad appeared to suppose that ho should
avoid any infringement of the Stearns patent; I assured him,
for my purpose, that that would be just as valuable, in my
opinion, if lie could mako improvements upon the Stearns
which could bo successfully used without an infringement
of tlio Stearns, ns to mako independent inventions."
There is much moro ovidonco in tlio ease to tlio snmo
effect.
Sueli was the result of tlio negotiations between Mr. Orton,
noting for tlio Western Union Company, and Mr. Edison, pt
that time. Edison engaged to dovoto himself, not on any par-
tioulnr days, but [by implication] at suitable times 'and in
suitable ways, to investigations and experiments tending to
discover whether or not ho could improve tlio dupiox or add
to the varieties of working the duplex ns a system. For this
labor and service ho was to bo compensated at a time and in
a manner definitely fixed, and suitable to his own wishes ns
expressed, and the diameter of the service to bo rendered.
Ho was not to bo limited to the duplex of Stearns, but was
to study the subject of duplex transmission in general. At
the time lie presented this paper (Exhibit 9), ho appears
o hnvo had in mind (wlmt other people also had thought
of for several years past) that if a duplex could be made
I practical and successful a qundruplox might also bo mnde.
Tlio indefinite and speculative state of his thoughts upon
the subject at that time are indicated by the marginal
memorandum upon one of tlio drawings (No. 14 of Ex. 9),
“ Fourplcx — why not ?"
In pm-suing the course of work required by tlio engage¬
ment entered into, lie was to receive from tlio Western
Union Company whntovor in tlio way of facilities for ex¬
periments, materials, instruments, and whntovor else might
■J bo requisite to enable him to experiment most efficiently.
! If ho iiad desired facilities to tlio exclusion of their business
or a portion of it, there is nothing in tlio ovidonco
:i indicating any limitation upon his right to mako this do-
; mnnd. Ho did rccoivo in this way all that ho ever do-
j mantled or was ontitlod to rocoivo, or that tlio nature
J of his work required. Ho did have, iu tho satisfac-
I tion of tlio general promise of tho company, the
| uso of all batteries, offices, workmen and material,
and did, night after night, have tho operators of tho
company working at extra work and for oxcra pay upon
those experiments, over long linos which tho compnny fur¬
nished him, and wore bound to furnish him for an indefi¬
nite time and to an indefinite oxtent, without certainty of
any valuable result Whcthor lie would over discover
any tiling worth the trouble and expense, no one could
know. Whether what ho discovered would bo patent¬
able, no one could know. Whcthor. being patentable, tho
frequent experience that others had already made the
smno discovery, would not ensue, no one could know. At
that timo tho W cstorn U nion Company contributed much tho
most important and valuablo stipulation to this contract and
assumed the greater risk. It yielded itsolf up to demands
which might be very onerous, for results winch might bo
worthless ; but for which results it engaged to pay their
full value notwithstanding its previous contribution to their
production. Inasmuch as that value could not, in the nature
of things, be estimated or fixed in advance, it was left in
that general way to be determined by subsequent agreement,
18
or failing that, by arbitration. An agreement unclor such
circumstances to submit at a future time to a definite me¬
thod of determination, like arbitration, the sums to bo paid
for something agreed to be done, or delivered, gives rise to
legal rights in both parties, which arc entirely familiar to us
all. I shall call your Honor's attention presently to the
law, as we understand it to bo established, that such an
agreement completes a contract capable in most eases of
specific performance, and the breach of which is measurable
in damages. In case of refusal by either party to carry out
tho agreement for an arbitration, the machinery of tho law
interposes tho common arbitrator, a jury.
Tho result of such nil agreement, as affecting tho rights
of parties and tlioir interests in the thing to result from the
invention ami labor of one of them, aided by contributions
of facilities and material by tho other, was spoken of by tho
parties, of eottrse, somewhat loosely, for tlioy aro not law¬
yers, and have had, probably, but little occasion to study
that neeuracy of expression in such mutters which is an
important part of a lawyer’s duty and training; and yet I
do not know that they could lmvo been more substantially
nccurato than they were. It was said that the patents, as
they should issue, were to bo assigned to the Western Union
Compnuy. It might lmvo been said that the inventions, as
tlioy becamo completed, and thus entered tho region of
definable and assignable things, might bo assigned; from
which last method of stating thu agreement it would result,
ns matter of law, that the patents, however issued, would
become tho property of tho Western Union Company.
Hut inasmuch ns thu invention was of value to no one un¬
less it could bo patented, the contemplated consummation
of all this labor, olfort and expenditure, was tho securing
of that desired monopoly of use which follows tho creation
ot a valid patent. That tho patents for these inventions
sl.oidd over belong to anybody but the Western Union
Company, whether actually issued in its own or the mime
of Edison, or of any other person as its trustee for that pur¬
pose, was never contemplated, and would have been indig-
tmutly repudiated by both it’ it lmd been miggcstcd. These
inventions woro, by tho wliolo scheme of tho arrangement
to bo made by Edison, not for himself, except ns ho should
bo entitled to receive compensation for them, but for tho
use ami for tho solo uso of the Western Union Company.
They were not nindo by him upon a general speculation,
that being made, ho might go to seek for a purchaser. Wo
certainly did not give our materials, tho uso of our wires,
our countenance and influence, our general and special aid,
that these things might bo invented for anybody elso. Wo
were quite willing to render all duo assistance, and to pay a
fair price for. the thing. That fair prico would, of course, •
bo determined by the general circumstances of competition,
and wlmt otliors would give if wo defined; but that wo
should, under these circumstances, ran the slightest risk
that any other person should obtain these inventions for a
price which wo were willing to pay, is a preposterous idea
under all the evidence, and is not, I suppose, believed by
any one. The situation is, in all its constituents, a peculiar
one, made all tho more so by thu peculiar nature of tho prop¬
erty interests which were the subject matter of the arrange¬
ment. Letters patent for an invention are known and
definite things, like a horse or a house, or a certificate of
stouk; and when speaking of them, wo apprehend easily
whatever relates to their general characteristics as legally
transferable things, giving certain rights to their beneficial
owners. But undeveloped conceptions ot‘ tlio human iniml,
whose development is improbable or impossible, except by
tho contribution, by some person other than tho oxpeutnnt
inventor, of mntcrinl, moans or facilities, are a novel sub¬
ject for legal conveyance or pecuniary valuation.
Nevertheless the multifarious ntl'uirs and differences of
men lmvo brought tho topic beforo this to tho judicial cog¬
nisance of a great judge; a judge whoso name will bo
mentioned in this court— whoso reports are alight with
hts decisions— with tho profonmlest rovorence. In the
case of The Continental Windmill Co. vs. The Empire
Windmill Co., in tho 8th Hlntehford, tho over to bo lamented
Judge WoodrutV laid occasion to consider and dotermino
wlmt rights and obligations attach in law to the parties to
such a contract, and what interest in tho thing which re¬
sults from tho work ami labor rendered under such a con¬
tract belongs to tho party at whoso instance the work and
labor has been done. I read this case at length, to indicate
the point at which tho law takes hold upon such facts, to
think ilie pliiititiil'slumlM
>'ii himself, in respect ton
t or recover for its use
is himself the pluinlill’s
citlinjr with tliis patent,
moll. Therefore, the nil-
mdiint’s agreement with
niitnge. It has been re¬
nt which operates ns n
igiiinst tiio patentee ami
though not rceonleil.
lis braneli of tiio ease,
he defendant, is equally
tho transaction bet ween
ted as n license to it to
immifaetnro and sale of
viows ilrst suggested I
msition quite clear.”
" tho tiling sold must bo fixed by tho jury ou a quantum ealebat,
"us in Clark es. Westropp, 18 C. 11., 105, whoro tho outgoing
“ tenant sold tho straw on a form to tho ineomor, at a value-
11 tion to bo made by two indifferent persons, but ponding tho
"valuation tho buyor consumed tiio struw.”
Benjamin on Sulos, 430.
Clark vs. Westropp, 80 Eng. Common haw 1!.-(1S
Common Bench), 705.
(2.) " Tho plnlntUT was retained, by resolution of tho diroc-
" tors of a public company, ns broker, to disposo of thu shares
" thoroin, upon tiio terms that lie was to receive jEIOO down,
“ and JE-100 moro when all the shares should have been allotted.
" By tho act of tiio directors, without any default on thu part
" of tho plaintiff, tho company was wound up bufuru the
" wholo of tho shares had bcon disposod of. Held, that tho
11 plaintiff was ontitlod to recover, as damngos for thu breach
"of contract, such sum us a jury (or tho Court substituted Tor
"a jury) should think reasonable.”
uicroloro prays tlmt the lotion patent for said invent
may issue to himself ami said Kdison, in the nronortio
interests of two thirds to himself and one third to
mont''’ "S 1,r°V1<lc<1 Sili<1 l,0"'0r of idtorney and nsi
“ Very respectfully,
“GEO. HARRINGTON.
“ NK''fA«K, N. J., Jan. 23d, 1873
Commissioner of Patents.
^‘°IO,al.Q 011 fi'° 1,1 l’om' oflioo certain anpii
•ill. a no! °'sVn"'y ,m!n0,aaSol° invonto|,. nceompan
th request to issue the patents, when allowed, to u
- am George B. Prescott. I made this arrange.,,,
O “ ‘ Thr m moncoua impression.
On the 1st ol October, 1870. I made „„„ . .
„, tract with Mr. George Barrington, mu, on me a
pril 1871, in furthoraneo thereof, I made to him an i
‘an, ’cat coupled with an irrevocable power of attorn,
citing the main provisions of the contract, both of win
0 Still in full force and ctTcct, whereby the control
ie-'c inventions was placed in the hands of Mr, llnrri,
,n Under and by virtue of this power of attorney, a
alignment thereon, Mr. Harrington claims title in th
, volitions, and objects, and has objected to any dot mt
•0,,, the said assignment and power of attorney. 1 tin
,,-c withdraw my request for the issue of patents for
lex and qundruplcx transmission to Edison and Prose
nd unite with George Harrington in his petition this ,
led in your oilico, requesting the issue of the let
atent to George Harrington and myself, in theproporti
ct forth in tho [lower ol attorney and assignment of A
, 1871, and tho contract therein recited.
" Bespeetfully yours,
" THOMAS A. EDISON.
And when we saw that paper we know that the ball
died. Whether we were invited or not, we decide,
rticipaie. Wo were there and took part. And the s,
ded by an emphatic decision by tho Coinniiss mi
items that tho legal title to these inventions is m Ed
id Prescott, as assignees of Edison, and that letters pn
ust issue to them strictly in accordance with their in
eat of August 10, 1874, which was put on record, an,
me notice to all the world Irani and after August .
174. It was when that decision was rendered that lla
irallolcd trick of amending tho rejected ease— rejected
jandoned since 1873— by adding to it the dcseriptio
use 'Jtl, invented in our own experimental loom, an
line included in the agreement with Prescott, was pine
pon us.
Wo did not know then, and v neve 1 c\ 11
Iter another, these papers, constituting the chain o
lnintills pretended title, went on file m the Patent
presence in tlio business of Mr. Jay Gould, its "‘conn'llli!'!
p,ir' ^■"•Uononvill perceive that, . . £
23d of January, Mr. George Harrington asserts himself
^I °"~!'0r °V.atUntSt0lj° t,,C °"'*‘or of -II those
gllls- W‘- Edison claims to bo the owner, with Mr it,,,,
ringfon, of whatever interest this phuntiff "ow e£
. ™s no';ui: mi-v i'lliniation anywhere that the plaintiff
taken" USlC< n'°’ of 1,10 I»occctlings that wore being
'J’bo parties scorn to have boon, front the bec lining. „ .
brio to determine their coarse. While Kdison was making
ho duplex they claimed nothing in it (fol. plir., 1058). When
iian imrinn feT°" l"T1'!a,,C0' ns con*aining a .piadruplex,
18 l onlv mUlcr 1,10 “Sfccnont „{
,IS . ,,ls telegraphy’, but claimed it all (fol. deft.,
200). M hen the J.lamtilT, through Mr. Gould, resolved to mu
tome claim upon it, although they were in chief nonoti.,.^,
with lloiir, the alter cijo of Harrington, they bought Kdi'son's
“ , ^,000 for what, if their
?atcs "•orof>'>divciy t™,^)
glit of Haiiingloii the whole interest for $5,000. Then
tovdtT llr"y°n «'«1 Hdison to represent' that
^tmasownen i do ]nl0 t °fl 0 , LCL ,
el ve a dm10,e7°!'S'S °f tl,!lt I»<>ecctli„g, revealing then,.
nil Itl'l ?' hit by the beg,,,, ngof this
Z,1 ,5 ir, ire d' is
ehcutl1,1,'0 Pl'm ";'lich J down, 1 shall speak of
dates now put forward. I shall, therefore, return to the
letter of Kdison, in which ho refers to Harrington's claim
to have the patents issued to himself and Kdison, instead
of to Kdison and Prescott. Harrington asserts that by an
agreement in writing, which was dated October, 1870, and
put on record in the Patent Olliee for the first time on
January Utb, 1875, and which we thus heard of for the
first time, anti by a certain other agreement, dated April -1,
1871, Kdison had become bound to give him these par¬
ticular inventions.
'J'lic Court: Where does it appear that the two instruments
of October 30th, 1870, and April -I, 1871, were tiled in thu
Patent Olliee in 1875?
Ur. Lowrcy: That of April ‘1, 1871, was lileil in May of
that mill" year; that of October, 1870, was not lileil until
January 11th, 1875. That date should bo now marked
on the paper itself in the record.
[Tlio paper was so marked.]
An intelligent and proper consideration of tlio effect of
these papers will be aided, 1 think, by referring fust to some
principles of law which should be kept constantly in view
ns we read them — principles affecting particularly the stale
of these inventions at the time the paper of 18,0 was
made. The legal title lo these inventions is, 1 suppose, now
conceded to be in Kdison and Prescott: or, if not conceded
(and f do not propose to tusk for any concession), at any
rate the general tenor of opinion seems to be m
favor of that interpretation of those respective claims
I suppose that the agreement of August 10th, 1S7-1, heiift
tlio first conveyance affecting those inventions aflei they
were invented, has the effect to pass a legal interest it
tlio persons therein named, although it may be one wind
this court may forbid being held or enjoyed. The testimony
of Kdison (when lie was interrogated by the party who enllet
in 10 j- or nor until lb/ 4, although it is possi
in tlio year 1872— a year or more alter the dale of
agreement with Harrington that 1 am about to refer
had attained a hotter conception of wlnit lie was to i
ho ever had before ; and perhaps lie had eliminated j
the dillicidtics, and learned something more that wai
sary to success. As to the practical use, tliero
proof that Mr. Edison over made any of his invention
tiral sooner than 1874. On the continry, lie tells us in
by the letter of Juno 21st, 187-1, that bo has not doi
thing yet That being the stale of the facts in respect
Edison s inventions, and the degreo of their developti
becomes necessary to impure at what time legal ini
sustained or sustainable by the force of law, attach
dovolopmg conceptions of the mind, so that they n
made tl.o subject of bargain and sale, and trims!
tlmt tl.o instruments relating to them mav, being with
terms of the statute, as to the registry J such convey
uc put on record and become notice to the world
with reference particularly to tin’s tpicslion not only <
assignable capacity of these inventions, but or the off
die vn ou, in tru, eats on record as notice that they
I said, at the close of the morning session, that it sc
bo stati J0,. ? ’ With ndvu"tn«0' insider at this
to state °f the law affecting the assignable chnract
rard by the plaintiff ns Having eitcc e<
ransfer of these inventions. Neither the
lie common law gives any right ton mat
isc of the conceptions of his mini , noi «
,f the privilege to nse bis inventions am
inclusion of oilier persons. 1 lint, kind <
done makes an invention valuable is pa
itatute. The beneficial and tinnsferalil
nation, whether it is enjoyed prior to
patent or subseipienl thereto, is purely
statute. The sole property which an in
volition prior to the grant of letters patei
tlio Supreme Court of the United States,
10 How., -177, to lie merely an inchoaj
possessed of an absolute right to the
pliancc with certain statutory rorpiirem
a patent is recognized by die statute i
language of the statute is (Section 4,8'.'
“Patents mav be granted and issued
“assignee of tlio inventor or discover
“incut must lirst tie entered of tee
“ office.” It is evident from this that
plates, before there shall be any ussig
tiling, dial it shall be a thing actually
vented or discovered, distinguishing th
case of a contract or assignment by tin
a thing which lie lias discovered or i
tract purporting to be an assignment
lnting to things which perhaps lie may
discover. The lirst sort are recognized
and the instruments assigning thoui >a
to go on record. The second sort are t
law in any way as assignable, altliougl
concerning them may be made, to whic
in the proper manner by die proper co
laid clown by the courts. >C( 1S C cni^
In Hoberts vs. Heed Torpedo Co., « Fisher, 02!) it win
said by Judge Grier: “It is when speculation is reduced to
practice, and notl e L I \j iment, that
„ n", ‘ 1 0 s ,0 a"11 •> inventor is entitled to a
pntenL the pertinency of this citation for our case
depends on the coincidence between the right to n patent
and the right to assign the invention, the criterion of both
being that the thing shall bo capable of being described
sepamtoly from all other things, so tin it may bo assigned
Midi name and description that the assignee nmy know
wlmt lie takes, and nil other persons who see the desuintion
also may know. The invention becomes assignable when it
is perfected, so that it may bo described and ontilled to re-
z::ip;tontf^KlQ,;‘hiit t» «*. ti,«
I,1# °r' 0t°'’ 0 l Fisher, 258, Hall, Judge, said •
If a pe, ,o,i having some vague notion of the principle
, lnn,ko m"noro,ls «nd experiments : if those trials
ami expornnents do not result in such a knowledge on his
Of whinl "r °8 lm"1l0|,l,t i»l° «uccc.sful practice tl,o idea
h vo to in°, “1S SU0 ''IT "0ti0"1 1,0 »<* ^ome an
imontoi m the sense of the patent law.”
into —,g . . 1 ■
m 0111 brief, and .shall only call atten-
, to one case in the Court of Appeal, in this State the
estion r, V, tako" hy th0 Court of Appe is o tl
generality of the language is all that need to bo observed :
“So far, then, the covenant of the defendant is this — that
“ all improvements to the improvement transferred, which
“ at any time after the execution of the instrument in
“ writing lie might possibly doviso in bis mind, and ovory-
“ tiling which came into actual existence with his own hand
" or the skilled hands of others, but by the operation of that
“ instrument, belong to the assignor of the plnintill for the
“ same period of time and the same extent of territory
“ ns was airoetod by the grant in that instrument. This
“ is the covenant intended bv the defendant to bo
“ made, and by the assignors of the plaintilt to bo taken as
“ it is to lie gathered from the meaning of the words they
11 have used in expressing it. And this meaning is also
“ given by tlio words of the Patent Laws of the United
“ States. And they should bo a great helper in reading
“ that meaning, for it was with matters with which those laws
u nro concerned that the parties wore contracting. Those
“ laws permit and uphold the selling and transferring of Hint
" which lias gono no further than the mental devising cur-
“ riod into practical oiled by the maminl putting together,
“ so that there lias come out from both a now thing, though
11 letters patent lmvo not boon obtained therofor.” Further
on it is said: “If, while they authorize letters patent of
“ an invention which lias been fashioned by the hands
■i j„i0 un actual independent existence, they do not allow
“ them if that which lias been only conceived in the mind-
« an incomplete and imported invention resting in more
ft theory, and not actually reduced to practice— is not
“ patontublo.” There is a continued repetition throughout
this opinion that tlio conception touching wild wo call inven¬
tions must,1 in ordor to bo tlio subject of a pntontortobo tlio
subject of transfer, not only bo conceived in tlio mind but
fashioned by tlio hand. Tlio pliraso is evidently intended
to cover all expositions of tlio tiling in a practical maimer,
whether by the band or otherwise ; though I cannot eon-
ccivo of anything of this sort which is not fashioned by the
striimont of 1870 was rnado there was nothing in existence
upon which it could then take effect ; and, indeed, it docs
not purport by its terms to operate as a conveyance in
prazenti of anything. It appears to be an instrument wait¬
ing the parlies in a partnership for the purpose of carry in"
on a particular kind of business. Its terms raise m-avo
doubt at the outset whether the parties at the time of° put¬
ting that agreement even contemplated any such largeness in
the application of its terms ns is requisite to make it in-
volve systems of telegraphy at nil.
It appears that the duplex is a system of telegraphy
and, as was expressed by a witness on the stand, in answer
to a question as to whether the duplex is not a machine, “it
is not a machine at all; it is a process or system." The
systom or process is carried out by tho use of old ma¬
chines, or the putting together of old mnehines in a
now manner. Tho automatic is a systom. This part-
norship is a partnership as “inventors and manufacturers of
a j °f nlno,,ln°0’. instruments, tools, battery materials,
and all and whatsoever maybe required by tho various sys-
tons of telegraphy, and of all such machinery, instruments,
tools, or articles or things, tho manufacture of which may bo
offered to or obtained and accepted by thom-the said
parties to bo interested ns owners in all original inventions
and improvements invented, purchase 1 or obtained by them
or either of them, and in all tho interests and profits nrisiim
therefrom. Tho length, breadth and the entire scope of the
region created was that of a partnership in manufacturing
mUwenting ^MmgHn the nature ol ,,t c L
luo aud ninterml required by different systems of tele-
,nil) Hoc sti-ieto 1 cl ] t , o tl e , ^ r
agreement C Mr L 1 0 lu S ‘I c CO t c of this
agreement, should have tho good fortune to invent an
° cly no system of telegraphy, by which wires and bat¬
teries could bo dispensed with, but yet should bo, in tho
The we* ,° e0tl'i0 tole8mP*li it should pass under
he agreement, I have no interest in the consideration of
the agreement between these parties other than what is re-
°,Ut-°f °Ur but 1 m-cst, without
stopping or considering .t worth while to stop and enforce
the proposition, that there is great doubt in the outset whether
the agreement of 1870 lias any possible or proper applica¬
tion to the thing we are talking about That is a new system
and not a new machine or device. This instrument must be
claimed to be, for the purposes of tho plaintiff, in force down to
and covering the period and all the periods ... which nl he
thimrs now in question wore devised by Ml. luhson, othei
wise the claim is nothing more than that there was last year
a bird's nest The plaintiff was successful ... inducing
Edison to sign his name on tho 27th of January to a paper
b, which, referring to this instrument of' 1870, lie says it is
still in force. He was in the hands of the potter at that
time and he has since been in the hands of tho Court, upon
the stand, as the witness of the plaintiffs. We liavo heard
what ho has had to say under oath and cross-examination
^othecondn^g^ofth.,;;^^^
wlmt"ileMiS.0rUe said ‘ the thing had burst up" (fo'^O-
That was his phrase. He said that in the latter part of 1ST 1 .
^ weTa’rav and did not return to that place or that bus, -
“ ‘ Mt yiunav, who was examined, and who
bira *11 tbl time ‘and knew all the facts, tells us
Edison swat *tt*v berause there had been what he do-
mietl a# a hwmdk by tie parties of the terms of tho agree-
mint.’ One cwtfe Wi of the stipulation, had been
Mr. Edison, and practically
Vr Edison from his duo share m
“ othershop. Q- That in .can, ^
I rVe liSd SLta « • member of the firm. Q-
I j0ou0lndcramnd thnt wblra Mr.
“ aonnlly and corporeally— yes. Q. Did you ever object to
" .Mr. Edison being corporeally absent although spiritually
"present? A. I never did."
Mr. Heidis, however, of the opinion (lint although bo went
away lie did not go away— he was there. He says that ah
though not corporeally present ho was there, he knows, in
law, and when asked whether Edison admitted that ho was
there m that manner, so as to remain a partner in the firm
Mr. Heitr was only able to say, “ I know we claimed it" That
was as far as tlioy could get in proving a continuance of the
partnership business. 'J lie fact to bo drawn from the testimony
and supported by it, is that the partnership arrangement of
1870 was pushed asido and crowded out by the pressure
and changes of events and the coming in of new parties,
that partnership provides that Edison is to have entire con¬
trol of the shop and of the expenditures therein. Ho was to
make estimates, etc. The partnomhip was evidently to bo one
requiring the entiro time and attention of tl.e parties. In
express terms it provides that Edison is to give ins sole in-
venfve powers to this partnership, which is a manufacturing
partnership, in the carrying out of which they contemplate
thopossib'htyof inventions. Now, it will not be disputed
\r rr ° , lat, *’1Ut "•|liu'1 concerned manufacturing,
Mr. Edison broke it up and went away. Whether he might
been prevented from breaking it up, and whether his
puttier might have resisted all that, we do not know. If
they had resisted lnm lie would probably have been advised
ris to ins rights in that respect. The fact is, lie was loose
T” '0 '!°rk ,wbon "'e met him. It will be art u] ,o
t ie other side thnt hewas not loose in regard to the partner-
dnp inventions. I shall ask them to show us in that agree-
0 J'r /r1"0" P,Tv!0cS !or tl,is kind of severance,
vl,i o ,: ^ |IS!n C°Uld be he,d bound « to inventions,
ius neL d 8° {rC° ns t0 tho kraneh of the
mess, a hero is no such severance possible, leaving tho
>ld agreement tostand. Whatever arrangement mightliave
lions ” as a warning to die unnotifled public. W o
new firm the very things they were formerly associated to
make and sell Wo hear of no protest being made then, but
::: bear now Of a qualification of the old partnership, so as
to continue it ns to inventions, while discontinuing it as
manufacturing. When > c c and in «»!.■«*
sassgss
T?™' f wLS’Ccontinue the pnrtnorsl i me npic
mmm
not sustain, bo tar as . So f,ir 1V! it bur
Mr. Harrington, we areqmte cent Jo* go f#r ns
them to inanufacturo togethei,^ ^ ng,uolllcnt advaii
regards inventions it i inrs whothor they can joint
that parties will b° ^ which gives Hnrnngt
invent or not, is absim. ‘.on -g gUBtnjnnblc. I ta
together, I take it they me partners whether they have
agreed in advance that they shall bo so or not On
the other hand, if General Butler and myself wore to
enter into partnership in regard to inventions, I fear we
should not invent anything valuable, or, if we did, it would
not he by me hut hy General Butler; and in that case all
the previous stipulations in the world could not make us
11 partners ns inventors.”
The Court : Arc the terms “ joint inventors" and “ partners
in inventions " synonymous ?
Mr. Lowrey: I tnko it they are not so.
Mr. JJutler ; Wo think tlicro is a difference.
Mr. Lowrey: To sny partners in inventions is one thing.
Hint is the kind of partnership which existed between
1 rescott and Edison. But to say “ partners as inventors” im.
phos joint participation in the act of inventing.
The Court: Partners are more than joint owners. Pontons
may bo joint owners without being partners.
Mr. Lowrey: Precisely. It may bo Hint the interest that
persons have ... the business may bo more than joint owner-
l p My impress, on is precisely that that is the character
i ,r 'tV * but."'llethor il is '»°’c or less, that is one
In it 18 “ 1>al’°'' mm.10 in I870> to l«ko effect
m u i° °Xt. fivo 111 wliioh the parties agree— to
* f 1,1 1,,volltlo“s 7” Not at all. To bo partners
n,wr'bffn S^,j°int °"’"c,'s in "'volitions. There
"ay bo a partner. That is one thing. There may be a
aitnershipm inventions where one man would do tho in-
ontmg and then ho may agree that it shall belong to tho
* icn there may be u partnership in inventions aria-
« from each contributing his joint skill and joint genius to
Mr Lowery : Precisely. You liavo not mentioned at all
••partners as inventors." There might not be any invon-
.lions at all. It is stated in tho paper that the said parties
abovo named will bo parties as inventors. That is absurd,
and we .-hall all agree to that when the case is over.
It rests upon tho plnintifl to justify, ifit can, a larger mean-
ing than the terms just read imply. Itis true, tho fifth clause
recites that hklison shall give his whole “ tune and attention,
talents and inventive powem," to tho busincssnnd "Mot
the firm ; but that clause cannot operate to enlarge the busi¬
ness or interests of tho firm as they woro laid out and pre¬
pared by tho terms of the agreement, and certainly cannot
do that by insorting now subject matter within tho opo •
tie., or those terms, simply because Mr. Edison may have
the luck to conceive of something outside of tl,os“ t0™8'
and pro oed to invent things that were not contemplated by
tho first clause of tho agreement. It seems clear that the
latter part of tho fifth olauso, in which are found tho prohi¬
bitive terms relied on in regard to the Western Union Com-
puny, is against public policy and tho law of natuio. li e
provision of the fifth clause is that the party of
shall givo his whole timo, and talent, and inventive povcis,
etc to the business and interest of the firm; but lie binds
himself not to invent, under a eeitain cont.act iefe.,ed to
abovo with the Gold and Stock Company (which seems to
havoVcen in existence at the time), any
will militate against automatic tolcgmi ) ,
himself not tosell or transler to any
out tho eonsont of tho party of tho . 1 • , .
lion or improvement that may bo usotul oi darned i .
lion oi i l \,v those few words, tho efloi
automatic telcgiaphj- ^ J tho ,li(5her interest
c\cr was requisite or necessary and within his power for th
Gold mid Stock Company. So tlmt tlio two vices whic
this instrument develops are an attempted limitation of Mi
Edison’s power of usefulness to society generally, and ni
attempted stipulation for the breach of his first agreement
by stopping short of its full performance whenever it shoe!,
rim contrary to the interests of the party with whom he wa
then agreeing. I cite, in support of the proposition that the*
prohibitive terms aro against public policy, the ease of tin
Leather Cloth Company vs. Lorsont, I, It, 9 Equity Cases
o4d. An old maxim of the law deelnres that no man cm
ho permitted to incapacitate himself— Acme In lie l „
mnauiliture sei/mim. — Brunch's Maxims. I do not think i
useful for any purpose to spend more time upon analyxi.u
the provisions of this agreement. It is set up against us .«■
-holegal cornerstone of the plaintiff, asserted equitable
-state, and wo hnvo, therefore, scrutinized it. It does nol
•opay or justify further attention.
Tlmt C°'Tnt S00ms t0 bc li,nitod ll‘° GoM
•*"“ «“ r—
The other pails of the agreement aro ox-
lus'vo of any labor or eflort by Mr. Edison, though I have
o sunicieiit interest in the paper to claim that thov are not
Nor'to'soll ,TI‘° rll,tt01' '8 inol”sivoof 11,1 ‘l>o world-
Noi to sell, transfer or convey to any parties whatever
•itliout the consent of the party of the second part, any in-’
entmn or "nprovemont that may bo useful or desired in
, “ r ,.TI,0I° ' ,nt,0lUl“ 1 111 limitation of
m io lntn „JM ,S°n t,lftt im,°n"it0 «nd uncertain
tion defined as whatever may bo desired or useful in
is „ H 10 'Tlccessr"' “"’petition of the quadruple*
m ion w ri:,,S° thCy d°Si,'° 10 ,lso tl10 T"> l™f !c\ „ eon
(1 nnd ended things, lhcy weic rau
Harrington, nt first. The next thing we
f carrying on tho business of inanufaeturi
'0 or six new partners have come in, and
,r any firm of Harrington k Edison. E<
give his wholo timo and attention, has nol
from all visible connection with the bus
accounting or agreement between him an
as partners. Thcro is no business of mni
, done upon tho original plan. All are at
at shop and machinery for tho benefit of
tho automatic line. The firm is J. G.
'L'ho monoys aro kept in that name. Stn
Bed, without the consent of Edison in nnj
tho scone had shifted. It had had an ’
phis little partnership was too small for
[ irreat enterprises which Boift and his I
0,l'hc vrowtii of the t itoi to c ense
i„ of fioiff and other men of ontorprl
\ the new sehenio of forming a tolegrapl
running a new line, had pushed the old l
mid thero had been substituted for it quite
,on which tho business was going on. Mr.
. ... aiinnrscded. The business was bro
54
son against Goorgo Harrington " for just those things, and
paying them. Rut whether it over existed, or how long it
continued, is indifferent to us. It was in the pocket of Har¬
rington, or wherever he elioso to keep it, until January 11th,
1875 ; and whatever rights Harrington may have had under
that instrument, unless they are able from tho ovidonco in
the case to affect us by definite, specific and lair notice
they are rights to avail him or his assignee ns against us!
Jvow, tho solo offort to affect us with notice of this instru-
i"0"1 0 ls *’y ,noiu s of tho si i io t of April 4th,
18tl. dd, at t out was put on corl o the Otli of
nlay, 18(1 ; mid if it was required by law to bo put on record,
then it was notice to all tho world of its own contents, and
might also, if sufficiently explicit and clear for that purpose,
charge the render with notico of otlior and extraneous matters.
Wo will look into tho first condition first, and see whether it
was lawfully put on record in respect to this, and to whether
i was notico. The statute of tho United Stntos authorizin''
registries of this character governs. I road it again : “ Put-
cuts may bo granted and issued or reissued to tho as-
nSVV10 i"V°"tT °r dlscoverol'> hut the assignment
J1. ‘"st bo. °"to,od 0,1 record in tho Patent Office.”
There is a provision in the law for assignments of lotto, s
patont actually issued, and those two constitute all tho writ-
tci, law upon tho subject of , •coords in the Patent Office.
I-T— "™ C0llal"b' not an assignment of letters
patont, for none were granted. If, at the same time, it was
no an assignment of anything at the time invented or dis¬
covered, it had no place on tho records in tho Patont Office
offorp 1 8 "°f ,mv° 1)0011 0,,to,'od tharo when it was
Slot T , rU,° °f tlmt °mo° ,1<w Prevailing it
co ild not now have boon entered of record. At any rate
' tic 0 1 , f .illy on record, it was not notice to anybody!
The Court: What has been tho practice in receiving for
66
The Court : Docs anybody know of any case in which any
paper offered to the Patent Office was refused?
Mr. Lowery: Yes, sir; I will point to a paper in this case.
The Court: At that time ?
Mr. lowrey: At that time, I believe, there was no such
Mr. Dickerson: You could put on record tho Book of
Exodus, if you liked.
The Court : The claim of the plaintiff is that everybody
is bound to tnko notico of every paper that is recorded in
tho Patont Office.
Mr. Unrobe: No, sir; we do not go to . lint extent at all.
The only question here, ns I understand it, is the practice
of tho Patent Office in regard to receiving papers. What
uso wo would make of tho reception of the paper would
dopond upon tho future.
Mr. Duller: Everything that goes to the Patent Office
concerning patent's is recorded there. Nobody is bound o
tnko notice of wlrnt is recorded there except it is something
that ought to linvo been recorded under tho law, ns m our
State w e require deeds to be sent to the Recorder ; and there
they are indisputable notice to everybody of wbut they
purport to contain ; but il the paper is not a deed, the Co uts
have held that it affects nobody with a “astruct.vc no ca
I shall nut claim anything moro than this: t the deed of
1871 is one not proper to bo recorded at nil, then any c •
struetivonof.ee of that deed does not affect the party de¬
fendant ill. constructive notice; but if the deed o [1871
is properly recorded for any purpose, so ilia ® « Jound^^
tnko notice' of it and of its contents, then it
there is in tho deed.
,r r .nee,, - T said at the outBet that there would bo
J5 vay little to differ about. The law of notice divides
piieajy with knowledge of all he would Imvo lea rood by 3U,
inquiry. I elialleiigo the record of the instrument of 181
as giving no notice of its own contents; and I challenge i
contents as not tending to give notice of any former t^rc
meat. It is not an instrument which appears by anythii
in the proor to be properly upon record for any pun, os
It was competent for the plaintiff to have shown that thei
was m existence at tlio dab of tl at i tr n c t dmo invei
tion already ma ’e, upon which an assignment, in praxcm
would operate, and, therefore, that this instrument wi
proporly on record as such assignment. That has not bee
shown. The instrument purports to assign all invention
already made or hereafter to bo made, but t'-oro is no n
eital that any have, in fact, been made. There is no ..roc
here that any have, in fact, been made, lint, so far as thi
party and notion are concerned in the certain severable am
easily distinguishable inventions now brought in question
the proof is that those did not exist at the time • and eon
sequontly, the contract was ns to them executory 'entirely.
I understand the proposition of Gen. Bailor lo go to thi,
extent, that tl this paper generally includes all Edison's in
ventions, present and future, and there was, at that lime ai
existing invention in ear wheels, Barrington was jnslifioc
.n l)“tlM18 ‘lie paper on record ; and that being on rccorc
n11 P™°nf’ were bound to take
lee of such part of its contents ns might afterward
na0eT,ines"PI dilbl° l°i subs“1,,u"1 "'ventions . .owing
nnchincs I dispute that as a proposition of law. At least
notice, because, in general phrase, used in 1871, there was a
word which, years after it was put on record, may be
forcetl grammatically to inoludo inventions made long
after; or that you nro bound to inquire concerning the
tilings you saw born yesterday, whether fifteen years'
before there had been an agreement made concerning
a general subject which may include them.” I do not think
the other side will claim that, as to tlio things involved in
this action, if the things did not exist at the date of the
paper it took effect upon them as an assignment ; or that it
affects them, if at all, otherwise than ns an executory agree¬
ment, or that it has any plnoo upon the Patent Offtco
record- But, suppose wo had actual notice of this; what
would be the extent and ofi'eet of the notice? I ask your
Honor’s particular attention to the terms of the paper. Lot
us compare theso papers anti seo whether, if wo had known
of this instrument of 1871, we should have been informed
by it of that of 1870, or fairly put upon any inquiry which
would have revealed it lo us.
As notice of an existing agreement in writing tlio
terms of Exhibit A, this instrument is entirely misleading
and deceptive. In tlio first place, the agreement of 1870 was
purely a partnership agreement between Edison and Har¬
rington. The instrument of 1871 recites: “Whereas, I,
Thomas A. Edison, of the City of Newark, in the Stnto of
New Jersey, for certain valid and valuable considerations to
mo in hand p aid, and in further consideration of certain cove¬
nants and stipulations to be fulfilled by George Harrington,
I stipulate and agree "-What? To go into partnership
with him as inventors and manufacturers? Not at all.,
“to invent for said Harrington full and complete sets of
instruments and machinery." Is that notice or a partner¬
ship agreement containing no such term ? The instrument
goes on, “full and complete sets or instruments and ma¬
chinery that could successfully and economically develop
into t. radical use the Little or other system of automatic or
tioned, nor is tliore any general engagement to do tlmt which
would develop that system anywhere mentioned. It goes
on to say, “and subsequently to improve and perfect such
“instruments and machinery, by adding thereto, from timo
“to time, such further inventions as experience should do-
" mand, and my ability as an inventor and electrician might
“suggest and permit; and furthermore to prepare, or cause
" to bo prepared, the necessary descriptive papers, the
"models and drawings requisite and necessary to obtain
“patents for all such inventions and improvements, to
“be the joint property of the said Harrington and my-
“self, and the" pntonls to be issued to tho said Hurrington
“and tnysolf," etc. There was nothing in the paper of
1870 about preparing models or dcscriptivo papers, or con¬
tinuing to improve upon inventions. Mr. Harrington was
ns much bound, ns one of the joint contractors, to continue
to invent, ns Mr. Edison. Your Honor can seo that tho
evonts which had occurred had shifted things around. Mr.
Edison was good for nothing ns a parlnor, but ns an in¬
ventor, to aid in developing tho ideas of these gontlemcn
interested in automatic telegraphy, ho was of value.
Further down, after reciting these and various other
things ns being in the agreement there referred to, and
which nro not in the agreement of 1870, now that wo bco
it, it goes on to say that these patents wore to bo tnken,
two thirds to Harrington and one third to Edison, tho whole
to bo under tho control of said Harrington. There is
nothing whatever like this in tho agreement of 1870.
Mr. Sutler: Certainly there is.
Mr. Lowrey: 'We should liko to see it now.
Mr. Sutler : It binds Mr. Edison not to sell.
Mr. lowrey: Js that tho only thing you find ?
Mr. Sutler: That is ono thing.
Mr. lowrey : It does not bind him not to sell partnership
property as a partner, but not to admit other persons to in¬
terests in bis patents. There is nothing tbntlimitsMn
Edison’s power as a partner, as fixed bylaw, over tho assets
of tho firm.
Mr. Sutler: We differ as to that.
Mr. lowrey: It then further recites, “ To bo dtapoNdoT
“bv Mr Harrington for our mutual benefit m tho propo
“Uons therein recited; and the said Harrington having
“faith! lb fulfilled all tho cove U r 1 M °
“ terod into bv him." Now, what kind of an indication is
that of a partnership agreement of continuca obhganonjo,
tho period of five years, when, within throe or fo ^ Qf
to identify the agreement of 1870 with tlm «
the paper which I am reading, because tint . » Uietr rnuy
work of 1873-4. This blanket is t°°short at bot 1
serve the pressing needs o Uo p tm^ J m(ml thoro ;3 a
After these reciuds of * ligament that will hereafter
stipulation in respect of thig iMltumont no-
bo made, and that was by ,nlulo nnd of In von-
tually made— of iiivontio £ idur those, I
dons hereafter to be .nod a v qucktI0» of notice
propose to call ■ ° f e° J do n 1870.
derivable from this pnp0' 0 ^ llmt there is no
Now, your HonoHcuows^^ ^ a oonvoyancor’s office, whore
Agreements like tin's aro being made, than to begin by re¬
citing, in tbe very first paper that pen ever touches, tbo re¬
lations between the parties, ns if tbe agreement had been
completed at some former time, and then proceeds to specify
things which one or other is to do. This appears to bo like
an instrument drawn by a conveyancer to express an agree¬
ment presently being made, or made within a short °imo
previously, and which comes now for the first time to have
its record somewhere on paper. I think the partnership
agreement had been pushed out of placo before this n^ree
ment uas made I think Mr. Edison and Mr. Marring,
ton had recognized that their true relation was not that
Buf ^ '» '“><1 expended, and for
the interest they had begun to get in the new scheme of an
aiitomat'o telegraph company, it was recognized between
lomfioVe^3 ^ “uSiftoS
x=|33 SS2
relations between the ,1!!. ', Il,w,,s 1,1 or(,or 10 fix the
7 ’ tho arrangement established by that of
(The hour of adjournment having nrrived, Mr. Lowroy
postponed further argument until 11 A, M. to-morrow).
Tuesday, June 19.
Mr. Lowrey resumed his remarks, and said :
I was speaking, at the close of yesterday’s session, of tho
effect of tho instruments of 1870 and 1871, as means of
bringing notico directly or indirectly to the defendants of
the assorted claims of Harrington. In this I was assum¬
ing that the record of tho instrument of 1871 was author¬
ized by law, and did in law nll'eot all tho world with notico
of its own contents. Of what would tho words contained
in that paper give notico to an intelligent person — reading it
in good faith, to obtain a comprehension of their just mean¬
ing? In 1878, when Edison called upon Mr. Orton to
solicit tin's arrangement about duplex improvements, sup¬
pose it had thou boon suggested, by nny moans, to Mr.
Orton’s mind that agreements relating to this subject had
previously been made by Edison, and that ho had inquired
at tho Patent Office, and tlioro obtained n copy of tlint in¬
strument — what would lie have learned from it? A careful
study would have revealed to him that that instrument was,
in its substance, and in its granting parts, cssontinlly a con¬
tract by Edison alone ; signed by him alone ; and contain¬
ing, ns a statement of the consideration for its granting
clauses, a clear and apparently comploto rccitul of certain
prior obligations of Edison, tho performance of which this
paper was intended to secure. Whatever ho may linvo
thought boforclinnd, that reading must have satisfied
him entirely as to the whole of the relation between Mr.
Harrington and Edison touching this subject. If he had
gone there with a doubt on his mind, that doubt must have
been removed or turned into certainty wheiUio found it
there slated that an agreement had oxisted between them ;
r what precisely it was with nothing to indicate that tho
statement was incomplete or lacking in anything ; that it
02
lmd boon fully porformed upon Harrington’s part ; and that
it remained only for Edison to perform from timo to time,
when tho relation between them would bo completely satis¬
fied as to all domands upon either. If his attention had
been called to tho only mnttor about which definitions
might havo been required to introduce tho greatest cer¬
tainty, that is to the use of tho terms “fast "and “auto¬
matic," and he had recurred to the state of knowledge then
existing among telegraphers, ho would havo learned that
“fast" was an opithot alleetionatoly applied by tho friends
of the automatic to that system. Ho could not, so fur as
tho cvidoncc informs us, have found, at that time, any per¬
son on the face of tho earth who had ever heard tho terms
"fast" and "duplex" applied ns synonyms. Ho probably
would not havo found any person who had over hoard tho
term “ quadruples " Suppose, in an excess of caution
(which, being customarily indulged, would leavo no man
any greater portion of his timo for profitable occupation
than tho automatic system allows for telegraphing — that is,
two days of notunl sending and three dnys to find out if tho
messages wero actually sent), ho had sought out Harrington
and said to him, I urn about to ontor into an arrangement
with Mr. Edison, seeking to discover improvomonts to tho
Stearns duplex, and gcnomlly to benefit tho Morse system in
overy way which shall not infringo upon Edison’s obliga¬
tions to you under this agreement of 1871. What objection
would Mr. Harrington havo been ablu to make at that time,
in the then stato of his own knowledge, and especially in
tho then stale of his own knowledge and opinion as to tho
objects which ho had had in viow when lie rnado the agree¬
ment of 1870, and received the papor of 1871 ?
Up. to that timo Mr. Harrington, ns wo now lonrn, had
no opinion of his own that these papers covered tho duplex
or quudruplox. It was not until September, 187-1, that ho
yielded to the liberal principles of construction by which
Mr. Bein' appeal's to be controlled, and which, apparently,
claim everything upon tho simplo theory that tho best way
to get that which belongs to one is to claim all that belongs
to otlior people, and tnko the chances upon a general sift-
03
ing. We find Harrington’s letter to Sorrell written on the
20th of September. (Ex. 80, defendant's proof.)
“Mit. Skiiheli, — Dear Sir: It you can find it convenient
“ this evening, will you please look over the Harrington and
"Edison contract, and see if it docs not cover the duplex
“and quatlruplex? I also leave the power of attorney, and
“ will cnll Monday to see you.
■■ Bcspcctf'ully,
"GEOHGE HA1UUNGTON.”
This letter is liko a window into Harrington s mind, and
through it wo are able to see precisely the condition of his
opinions and expectations at that time. This is evidently
tho letter of a man to whom, for tho first lime, tho idea that
the contract of 1871 might cover the quadruplox and duplox
lmd presented itself. On the following Monday he did call
upon Mr. Sorrell according to this appointment. The only
power of attorney of which wo have heard is that contained
in tho agreement of 1871, and this was, probably, the power
of attorney which ho left for examination, Sorrell tells us
that, upon that consultation, Harrington based his claim to
the quadruplox and duplox soldi/ upon tho iden that they
might bu brought within tho moaning of tho term " fast
tolographv;" which term is in tho agreement of 1871 and
not in the’ agreement or 1870. It clearly onougli appears
that this was not a case in which Harrington was brought
to doubt n claim which lie had formerly made, but it is a
ease in which ho was brought to doubt whether certain
terms used by himself for one purposo only might not bo
made to servo others, and to cover now and different things,
not within his contemplation when tho terms wore adopted.
Ho did not, even then, base his claim upon a pnrlncrship
under the agreement of 1870. Sorroll tolls us explicitly
that ho suggested no other ground of claim oxoept that
arising under the term “fast telegraphy ” in the agreement
of 1871. Tho defendant’s counsel objected successfully to
an attempt to learn from Sorrell whether Harrington had
before that time entertained any doubt upon this subject.
(Defendant’s proofs, fol. 2G3.) At tho interview Herring-
r
ton (fol. 269) produced the p:ipor of 3871, "and said that
" under tho expression 1 fa«t telegraphy ' ho contended that
“ho had a right in quadruples and duplex."
"Q. It was under the phrase ‘fast telegraphy’ that ho
“ based his claim ?
“ A. Precisely.
" Q. Did he mention any other basis of his claim?
“ A. I don’t call to mind any oilier. I think none other.
“ Q. You had before you two contracts or more at this
“ time 1
“ A. Only two that I know of.
" Q. One was tho contract of 1870 and one that of 1871 ?
“ A. Yes, sir.
“Q. When was any roforcnco made to either of theso
“coutrnclsby Harringion,in connection with the term ‘fast
“ ' telegraphy ?’
" A. Only by reference to tho pnper itself— pointing out
" tho plnee on tho paper. * * * * * Ho pointed out
“ tho plnee on the paper where tho words ‘ fast telegraphy ’
“ wero made use of."
Up to July, 1874, .Harrington had not entertained any
such opinion of his rights ns entitled him to protest against
Edison’s already completed and known transactions with
tho Western Union Compnny. [ For, in his letter of July
9th, which has been graphically spoken of ns tho 11 mid¬
night cry,” ho “ begs" and does not demand. He suggests,
as a reason why Edison should not do that to which tho
letter relates (whatever Hint may have been), that it will
cause n loss of the specific sum of ono hundred thousand
dollars.. Ho suggests, ns a persuasive reason to Edison to
stay some contemplated notion, that ho has been " investi¬
gating j" Hint he is “in hopes ho can relieve ” Edison's “ no-
oessitios." (Pllf's proofs, fol. 1408.) Thus every piece of
evidence adduced, which has not been tampered with (ns in
the ease of the addition of tho word “or" to the Patent
Office record), indicates, in a manner which seems to ex¬
clude any other idea, that as into ns September, 1874, Har¬
rington would not have been able to answer Mr. Orton’s
inquiry by pointing out to him thoso grounds of objection
to an agreement between tho Western Union Homonm,
Edison which are now mado the corner stono of tho plnin-
lill's case.
Whntovermnybotho case in respect to matters of science
and art, recent discoveries as to tho interpretation of old
contracts are not usually of great vnluo.
In tho midnight letter Harrington does not use any of
thoso terms whioli would naturally fall from tho pen of a
tnnn who is protesting against tho violation of a legal right.
Ho uses terms specially appropriate to an advoeney of tho
general idea which other parts of tho evidence reveal to us
as current among Harrington’s associates j Hint for Edison
to deal with tho Westorn Union Company in tho way of
improving its property and methods of operation was dis¬
loyal to thorn ns his associates in a rival and competing
scheme. There is a paper put forward ns having boon exe¬
cuted on tho 1st of January, under which Harrington ac¬
cepted $5,000 from Mr. Gould, for that whioli, under tho
phiintilV's present interpretation of these agreements, was
tho whole of tho qundrup'lex, lie knowing at tho timo that
Edison hud nlrondy received from Mr. Gould $80,000 for a
conveyance of Edison’s interest of ono third alone— that
interest being also absolutely then under tho control of
Harrington by an irrevocable and exclusive power of at¬
torney from Edison. Tho modesty of Mr. Harrington, as
evidenced by this transaction, lends us to doubt whethor
down to tho last moment at which he essayed to exercise
any control ovor qundrilplex or duplex, ho would lmvo
been able to answer Mr. Orton by pointing out- to him
tho grounds of objnetion to the proposed contract of
Edison and tho Western Union Company, which wo
are called upon to moot in tin's court. Wo suspect,
in fact, that tho $5,000 paid to Mr. Harrington on tho 14th,
under an agreement falsely dated on tho 1st of January,
was practically what is enlled n “strike" upon Mr. Gould,
suggested by Eciff, whoso knowledge of the whole business
enabled him to suggest with eft'ect to Harrington that Mr.
Gould, having paid $80,000 to Edison under tho impression
that he was buying something, could now be induced to
quiet iiis title by paying a further sum of $5,000. How
68
lVer Ant may H » ug in any wny ' w Hnrring.
terVetnfton of An ^ Ata
leave Ant to length upon n«y tbo propo-
AnU I spent nt gre illlroJuco and n PI J t nnd
j Anil now , j havo show , . . ti,ttV0
Aoso pToposttwn* °f ] wWd, l.nve ^cn. 0 ^ couia
fieiently, Antno'vr 6 1 870 and 18™’ inventions
ten made during Ac effect uP°n “3"xccutory
linvcbccn framed noroAerwtse tlmn Uml
»<•«" \,ri , SI OU.M 10 „1, to M‘“l ■•
operate ns cq ^ fr0,„ limo to tun ^ Uui npplf
these invonti -. . Wo things. As 1 , . 011SC involves an
l',0.,1Tt?U dortrino to Ae ° , J ed ease i form
cntion of A lr-in0 beyond any research has
extension of Ac tcd cnscs vA'U condition of
tlie most extre 1 bus nlwnys t\l0 facts
enabled us to fi *A,* ^ exp«?« g ‘ t 0f tlto
oil of wholes to bo caught 1ms for its basis tlie
fact in nature tlmt there are whales, and thnt sufficient
timo and effort being expendod, they can be caught But
It is not at all certain that anything remains to be discov¬
ered louohing any particular art, or thnt any particular per¬
son, however bound by contract, or desirous to succeed, or
willing to expend effort, will discover any of that which
remains undiscovered. Equitablo assignments, notwith¬
standing they are thus base:! on fiction, have been easily
sustained in actual ensos, beenuso such oases hnvc usually
arison upon facts which have bound tlie conscience of a
party to tho notion to admit tho fiction ; as when the cquit-
nblo assignor, or some ono standing in his shoes, or in no
bolter position than ho could claim, is called upon in tho
action to recognize tho binding obligation of tho assign¬
ment. But tho courts lmvo usually, on declaring tho gen¬
eral dnotrino that equity will sustain tho assignment of ex¬
pectancies (Story’s Equity, 1040, 10401), mndo careful ex¬
ceptions for cnscs in which tho obligations of public policy
or tho rights of third parties como in to make tho applica¬
tion of tho fiction inequitable. It ought not to bo necessary
nt any time to assert tho controlling doctrine of equity, thnt
it doo3 not permit anything inequitable to be done or re¬
sorted to in support of an equitablo romody. In Pennook
et al vs. Coe,. 28 How., U. S. 117-127, which was tho case
of a customary mortgage by a railroad company of futuro
acquired property, Judgo Nelson, in sustaining tho mort¬
gage said :
“ The proporty in this ease (tho locomotives and cars)
11 lcviod on nro nrtiolos specifically enumerated ; and the
“only uncertainty oxisting in respect to thorn arises out of
“ thoir non-existence nt tho date of tho mortgage."
***** ii Tho main argument urged against it
“is founded upon tho mnxim thnt a person cannot grant a
"thing which ho lias not ills non /label, non dal; and
“ many authorities aro referred to at law to prove the propo-
“silion, and many more might have been added from cases
“ in equity, for equity no more than law enn deny it. The
" thing itself is nil impossibility. It may at once, therefore,
“ be admitted, whenever a party undertakes by dcod or
" mortgage to grant property, real or personal, in pnesenti,
“ which docs not belong to him or has no existence, the
“ deed or mortgage, as the ease may bo, is inoperative and
“ void, and this either in a court of law or equity. But
“ this principle has no application to the ease bcforo us.”
***** n rp|jQ inquiry hero is not whether n
11 person can grant in pnesenti property not belonging to him,
11 and not in existence, but whether the law will permit the
"grant or convoynnco to take cfl'ect upon tho properly when
"it is brought into existence and belongs to the grantor in
“ fulfilment of an express agreement founded on a good and
"vnlunblo consideration, and this when no rulo of law is
" infringed or righto of a third party prejudiced."
Trull vs. Eastman, 8 Mete., 121, was a case between the
assignor of his expectancy in his nneeslor’s estato and tho
tenants of tho person to whom ho tnado tho assignment.
Tho assignor was not permitted to avoid tho assignment,
the Court saying: "And although tho grantor or releasor
" had not then tho present right, yet the subsequent ncquisi-
" lion of it shall inure to the benefit or tho grantee ; nr, in the
" better words of Lord Coke, 1 The grantor shall bo rebutted
"'and debarred when ho afterward shall so claim against
" 1 his own warranty.’ "
In Longton vs. Ilorton, 1 Ilaro, 050, Burney, a ship
owner, assigned four ships and their enrgoos, nnd all oil,
head matter, or otlior cargo which might bo caught or
brought homo in said ships. On tho arrival of tho cargo
tho assignee obtained possession of it, mid while in his pos¬
session it wns levied upon at the suit of an execution credi¬
tor of the assignor. The Vice-Chancellor, upholding tho
assignment ns valid, to tako effect in equity, roferred (page
659-60) to the fact that tho assignee had loft nothing un¬
done to perfect his equitable title, and said that a judgment
creditor who hnd not parted with his money on security of
tho goods stood in no better attitude than the assignor, nnd
said, “ If the asserted equitable title is not petfeeled, tl:o
“ earliest claimant, in point of time, may be postponed to a
“subsequent claimant whose title is equitable only — a ques-
"tion which I had to consider in Meux vs. Bell ; and if the
“equitnblo titlo of tho earlier claimant is incomploto ns bc-
“ tween himself nnd his debtor, the later claim, oven of a sub-
■ "sequent judgment creditor, ns well ns of a subsequent
i "cquiinblo creditor, might perhaps in somo eases prevail
"(p. 568). The ease of Doe and Coleman vs. Britain, nnd
i “ other cases similar in principle, have no direct application
" to the present ease, hut they show that a creditor by judgment,
I “ proceeding in invitum, does not, in the view of a court of equity,
I “ stand in that position in which he requires or receives the same
| “favor as a purchaser whose right is enforced through the con-
I “ science of the other purly."
ft In Field vs. Mayor, otc., 2 Sold., 186-7, the Court nddod
tho qualification that such assignments will bo sustained
j wlicro “tho agreements are fairly entered into, nnd it
" would not be against public policy to uphold them."
These qualifications, nlthough not expressly including tho
enso of inquiry to tho rights of third persons, established
tho principle that courts of equity will not uphold such
assignments against any superior eonsideralions, or even
any equal balancing of considerations; nnd it cannot
be doubted thnt hnd tho point been suggested, the Court
would have added “that such assignments will not bo
“uphold, where to uphold them it is necessary to set asido
"tho equitable or legal title of innocent purchasers without
" notice, nnd especially when tho holder of tho first cquiinblo
“title is guilty of luches in not bringing suoli notice to tho
j “second purchaser."
Calkins vs. Lockwood, 16 Conn., p. 277-288, was a
.' case at law in which the sale wns of iron, to be produced
from a furnace thou in possession nnd operation by the
seller, and the sale was held good ns against — not pur¬
chasers — but general creditors, and tho Court relied upon
tho fact that tho contract had boon completed before tho
levy of execution, by tho purchaser's taking actual posses-
Ssion of the property, thus completing his title, nnd no equit¬
able rights of purchasers having intervened.
It is of cou rso clear that tho general creditors of a
|| seller stand in no better position than tho debtor.
70
Mitchell i is. Winslow, 2 Story, 038-47, was a case in
which general creditors thought to resist tho mortgngo
of things not in esse at tho dalo of tho mortgage. Tho
Court, at several places in tho opinion, is particular to in¬
clude tho idea that cquitnblo interests have intervened, such
as those of innocent purchasers or creditors, relying upon
the possession of the mortgagor, and tlioJudgo says (page
630): “ It is material hero to stato that tho present is not a
11 controversy between a first and second mortgagee ns to pro-
“petty acquired and in esse, after execution of the first mort-
» gage, ami before the time of tho oxoou tion of tho second mort-
“ gago, both mortgagees being bona fule purchasers for a vain ■
“ able consideration, and tho second mortgagee having no no-
“ tioe of tho prior incumbrance. * * * Tho present is a
" question between tho nssigneo of a bankrupt, acting for the
“ benofitof all tho creditors, and tho mortgagee claiming titlo
“ under his mortgage * * * * (page 047). There is
» no protonooof any fraud, oithcractual or constructive. * *
ii# # q'i10 mortgngo was rccordod. # # # # The
" creditors, therefore, wero not allured by any falso colors or
“ falso credit held out to mislead them. # * # # The.
“ law makes tho registration of tho deed constructive notico
“ of its contents to all parsons, and sinco it was required to
“ be registered, and was registered, in conformity to law."
Tho modern English dootrino, with a very important
saving olnuse, respecting tho identification of tho thing
assigned, will he found stated by Mr. Benjamin, as follows:
" It is well to observe that in equity a difi’urent rule pro-
11 vails on this subject, and that a contract for tho sale of
11 olinltols to bo afterwards acquired, transfers tho beneficial
11 interest in tho chattels, as soon as they are acquired,
“ to tho vondee. The wltolo dootrino, with its incidents,
“ both at common law and in equity, was twice argued
" and thoroughly discussed and settled in tho ease of
11 Holywood vs. Marshall, whero Lord Wcstbnry and
" Lord Chelmsford gnvo elaborate opinions, concurred in
“ by Lord 'W’cnslcydnlc, although his Lordship’s first im-
11 ptvssion had been adverse to their conclusions. Tho
11 Barons of tho Exchequer held, however, in Bolding vs.
“ diced (3 A. & C., 955; 34 L. J. Ex., 312), that the doc-
“ trino of Holywood vs. Marshall only applies to suhse-
“ quently acquired property when so specifically described as
“ to be identified.”
Bonjamin on Sales, p.,73.
These cases (which I select ns fairly representative of the
general course of judicial remark and decision) indiento in
tho clearest manner that equity does not submit itself to bo
driven indiscriminately over and through the rights of third
persons by tho spur of this fiction ns to cquitublo assign¬
ments. Such rights are protected by other recognized and
leading doctrines of equitnble jurisprudence, and first among
these is the dootrino of notice. The two hang upon each
other. Thus tho introduction for tho protection of oquit-
j able assignees of the dootrino of assignments, opens, nccos-
j snrily, tho door to the introduction of tho equitnblo dootrino
of notico for tho protection of innocent purchasers in good
faith, without notico of tho formor assignment. Granting,
for the sake of argument upon tho present point, what for
tho general purposes of the ease we strenuously dony,
namely, that the Exhibits "A" and “B " would, as be¬
tween Edison and Harrington, have been enforceable as an
equitable assignment of tho inventions now clnimcd by us,
wc como to this controlling question ; the question of notico
to each parly to this action of tho rights and claims of tho
other. Tho equitable dootrino' of notice is an effort by j uris-
jj prudenco to enlist tho conscience of every party in aid of
/, tho administration of justico in the particular case. It seeks
1 to bind overy man to the conscientious obligations arising
j from his knowledge of tho rights of others. It stands ns
j free from technical limitations and tho effect of precedents
| ns any dootrino of the law, and approaches ns nearly ns
j Beems possible to a perfect measure of justico between par-
j tics. Its application is peculiarly freo and self-regulative ;
If so much so that it has been often remarked by great judges
that rules can be with difficulty laid down affecting it. One
definite and unchangeable element prevails in it always, how¬
ever, and that is that good Jaith is the sole criterion by which
a to determine whether tho pnrty who seeks to evado the effect
I of an alleged or real notice may bo permitted to do so. Tho
y
i
cnses, therefore, will he found, without exception, to turn i
upon’ the question whothcr tlio party sought to he charged
liad sucli notice that his good faith is reasonably impugn- 1
able when ho denies hiowlcdgc ot the material matter in |
question. "Fraud or mala /idea," said Lord Ilnrdwickc in |
Lo Neve vs. Lo Neve, “ is the true ground on which the \
Court is governed in eases of notice." t
In Jones vs. Smith, 1 Haro, -13, affirmed 1 Phillips, j
244, a party in advancing money on mortgago inquired j
of the mortgagor and his wile whether any settlement f
had been made upon.thoir marriage, and wm informed ;
that a settlement lmd been made, but it was the wife’s
foriuno only, and did not include the husband's estate,
which was proposed ns security. The lender was an attor¬
ney, and nfterwnrds advanced the money on the mortgage j
without having seen the settlement or known its contents. |
It proved that the settlement included the husband's prop- j
erty, which had been made thu security. It was held that J
the mortgngu was not, under the circumstances, all'eetcd |
with notice of the contents of the settlement or of tlio fact ; j
that the settlement comprised tlio husband’s estate. It was
also decided that though negligence may, in some eases, bo 4
evidence of, it is not in till, the same thing as main files. ■;■}
In this very instructive case, Wigimu, Vice- Chancellor,
» It is scarcely possible to declare u priori what
11 shall bo deemed constructive notice, because, un-
“ questionably, that which would not nll'eet one
« niuii, may bo abundantly sulliciont to atl’eot mi-
» other. Hut I believe I can, with sufficient accu-
» riluj for my present pttriiose, and without dun-
“ gcr, assert that cases in which constructive notice i
“ has been established, resolve themselves into two
" elasscs ; first, cases in which the party cliargou
“ has had actual notice that the property in dis- _
“ pule was, in fact, charged, incumbered, or in ,
" some way affected, and the Court has thereupon j
“ bound him with constructive notice of facts anil
» instruments to a knowledge of which ho woul h
» havo been led by an inquiry alter the charge, |
“ incumbrance, or ciroumstanee alfeoting the prop-
“erty, of wliioh ho lmd actual notice; and, sec-
“ondlg, eases in which the Court has been satis-
" Tied, from tlio evidonoo bof'oro it, that tlio party
“ charged bad designedly abstained from inquiry,
11 for the very purpose of avoiding notice.
‘"flic proposition of law upon which the former
“ class of cnses proceeds is that the party charged
"had notice of a fact or instrument which, in
“ truth, related to the subjeot in dispute, without
" his knowing that such was tlio ease, but tbnt ho
" lmd actual notice that it did so rolnto. Tlio pro-
" position of law upon which tlio second class of cases
“ proceeds is not that the party elmrged had incau-
“ tiously neglected to tnako inquiries, but that he
“ hod designedly abstained from such inquiries for
" tlio purposo of avoiding knowledge— a purpose
“ which, if proved, would clearly show that he had
“ a suspicion of its truth, and a fraudulent determi-
" nation not to learn it. If, in short, thcro is not
" actual notice that the property is in some way
“ a fleeted, and no fraudulent turning away from a
“ knowledge of fncts which tlio res gestae would
11 suggest to a prudent mind — if mero wnnt
" of caution, as distinguished from fraudulent or
" wilful blindness, is all that can bo imputed to
" the purchaser — thcro the doctrine of eonstruotive
" notice will not apply ; the purchaser will bo in
" equity considered, as in fact ho is, a Iona fide
“ purchaser without notice."
This important ease is cited witli approval. Williamson
vs. Brown, ID N. Y., 300.
Actual notice must consist in cortnin and definite informa¬
tion ns distinguished from vnguo rumors.
Williamson vs. Brown, 15 N. Y., 864.
Such notice must, ns a general rule, come from some per¬
son interested in the proporty, or in giving the notice, for a
10
strangers. ^ St(JVOnS) 20 jfCi) 484.
City Connoil ns. l’agc, 1 Spear's l‘.q., 159.
Kerns ns. Sivope, 2 Watts, 75.
Bernhardt ns. Grccnshields, 2 Eng. L. & Eq.,
77.
Although the assignee of an equity lakes it subject to
prior equities, this rule applies only when the equities are
in all other respects equal, and not when the equity of want
of notice is introduced to turn the scale, lie defendant, in
such a case, has a right to avail himself ortho plea of being
alon'u fate purchaser for value without notice, and if lus
plea is true in point offset, no relief can bo had against linn.
Bisplmm's Equity, § 204, and eases cited.
Bookman ns. Frost, 18 Johns., 544.
" Where there are two successive purchasers of tho same
equitable interest, the second purchaser, according to the
“ authorities just cited, will lake subject to the rights ol the
» first. On the other hand, there are not wanting opinions
" to the e ll'ect. Hint the assignee of a chose in action is only
subject to the equities or the party bound by the oblige-
n lion (the debtor), and not of those of prior assignees, llie
'• true solution of tho difficulty would appear to be found in
" correctly applying tho maxim that between equal eqtii-
n ties priority of time will prevail, the meaning ol which is
ii tlinl ns between persons having only equitable interests,
lit such equities are in all other respects equal, qm prior
at tempore, potior cst jure. If there is nothmj else m
■' case to turn the scale, and the only fact before the Court n
.. the bald factor priority or time, that, of course, will he
•' conclusive. But, in practice, this is scarcely over the ease.
.. It almost universally happens that two other quest, o
|| have to be taken into consideration— the question of
‘I inches and that of notice. If the first purchaser has been
•' guilty of Inches, his equity becomes inferior to that ol tut
|| second purchaser, and the equity of the latter will then
|| prevail ; for priority of time is the last ground of prelcr-
'• cnee resorted to, and will never be considered if there is
‘I anything elso to turn tho scale. On tho other hand, the
n second purchaser may, under the circumstances of the par-
|| ticular ease, he in the condition to avail himself ol tho plea
II of a bona fide purchaser for value, without notice, and it is
“ now well settled that such a plea is available for the pro-
'• lection of an equitable as well as a legal title. Therefore,
.. in examining into the relative merits (or equities) of two
“ persons having ndvorso equitable interests, tho points to
" which attention must bo directed are these : thonatuieand
“condition of their respective equitable interests; the cii-
“ ciimstanccs and manner of their acquisition, , am theioholecon-
« duct of each party with respect thereto. If the liiquiiy bo
ii directed on these grounds, a decision on tho narrow point of
“ priority of time will seldom, if over, bo found necessary.
Bisplmm’s Equity, § 171.
Tho principles upon which tho law exorcises its power to
forbid a party from asserting or defending that which othor-
wise ho would bo freo to do, como naturally to bo oonsid-
ored in commotion with tho plain, indcod I may say tho
admitted negligence of Harrington during the eg . ecu
months in which ho was, according to the testimony of Edi¬
son, daily informed of tho gradual progress ot ijmttow bo-
tween tho Western Union Company and himself, to notify
tho Western Union Company of his claims and pretensions.
These principles of estoppel by conduct, or equitable
estoppel, may, for the purposes of this action, be very
simply stated, to this effect, that where a person, snowing
his own title to property, oven although covert or under
age, Encourages or even lies by and permits a purchaser
to buy it, equity will compel such a person to convey
tho purchaser.
Wendell vs. Bcnssolacr, 1 Johns. Oh., 364.
Belknap vs. Kevins, 2 Johns., 576.
Chenoy vs. Arnold, 18 Barb., 475.
“Tho rule that affects tho purchaser is just as
it as that which would entitle the plnintilt
ii t0 a specific performance ngaiust "Wood [who
“ first covenanted to convov tn it,„ , i •
;; «»<! then to the defendant with notice], ft 'f
n purchaser with notice, he is liable to the Jatno
1,Z:Sti,,l,i! is bound toT
■'bonndtoJoSC«i."',W,,toWM,d,w
Taylor vs, Stibbort, 2 Vcs., Jr, 439
Pickard ^T’’ ° U"“ ll'« doolrlno of
, itKatd vs. Scars might be stated even
broadly than it was there laid down. “A nartv -
■i»i«i= ti„it m i„
Gregg vs, 'Wells, l<) Ad, and E„ 00.
Woux vs. Bell, 1 Hare, 84. This was a r
contest between Iona fids incumbrancers of cc, tain
■ « ’wssrsv »• •»'-
:r suitut * i&SLrrj
I11 the absoneo of notice tho
in "tlwTta'i.'T"* of 11,0 s"bjL’°‘‘ l'0™»™t'"ol I
I
„ “ ("0tICe' 11,0 soco»fi person has acquired a J
pei feet assignment, whilst tho iirst equitable f
assignment is icfect A,cro 1 , bebt“ ■
‘• ::s
ost 111 01' eini'ii upon it, stands bv and r }
“sees another sell it as his own without 1 1
“ ‘I®"' "''’j. ,m bo allowed afterwards to nssorUds f I
'He. His silence, when in good conscience he j
1 ouglit to speak, shall close his mouth when be
would speak."
Sugden on Vendors (Perkins’ cd.), p. 607,
j “ r" Marshall vs. Pierce, 12 N. IT., 127, 183,
| "Mr. .Tustioe Gilchrist said: 1 This principle has
“ ‘ boon ox tended beyond tho case of a fraudu-.
‘“lent concealment of title, and applied to tho
j ‘“case of one who was actually ignorant of his
I. '“legal rights; who could not, therefore, make
‘“known his titlo at tho time of tho purchase, but
I ‘who has still been postponed in equity to a
“ ‘ liana fide purchaser. A very strong easo of this
“ ‘character is Hobbs vs. Norton, 1 Vent., 180, of
‘“which Mr, Chancellor Kent says in Storrs vs.
“ ‘ Barker, 8 Johns. Ch. 1GU-72-78, “ it was eon-
‘‘"finned in subsequent eases, and it has novor
“ “ boon overruled or questioned." ’ "
Sugdon on Vendors, pp. 007-8, noto » U."
We have thus a general statement of the rules of law
allecting tho three topics of capital interest in this ease, viz :
Equitable assignments ; Purchases for valuable considera¬
tion without notice; and Estoppel by conduct, or equitable
estoppel.
From theso general doctrines aro doduoiblo ns specific
Propositions growing out of and applicable to the facts of
this ease —
. !• That Harrington was bound, when ho learned from
Edison of tho proposed arrangement with tho Western
Union Company, to call upon that Company and give it
notico and warning of his rights, or claims of right.
As lime went on and he was from day to day informed
by Edison of what was being done, this duty grow stronger,
and ns it grew stronger, and was still neglected, his right
to assert these unnotified claims against tho Western Union
Company grow loss and less in moral weight, until at last,
in tho cyo of equity, it disappeared from tho category of
. U11'"UIU1U protection ; and tho right of the
clolondnnt to insist upon the cstoppul tints resultin'' omcf'cd
mto a predominant place. This is the state of facto referred
to by tiie adniirablo writer, Bispham, when lie says "That
‘ ,ll|l!0,1Sl‘ il is ll™ ‘bat tl>° assignee of an equity takes it
‘ subJ.cet t0 l’r‘°*' equitieH, tho rule applies only where the
1 equities are in all other respects equal, and not where the
.. °{ 1‘? w“"tof,,ol{cc is introduced to turn the scale
X lie defendant in such a ease has a right to avail him'
“ self of the plea of being a bona fide, purchaser for value
without nolico; and if his plea is true in point of fact,
no remain ««» »<•' M against him " (§ 20-1).
2. The conduct of the plaintiff in possessing i, self of
claims held in this situation, and under full notico of tho
facts and circumstances creating equities in tho defendant
puts it entirely out of tho entogory of thoso who arc un-’
titled to assort such rights as equitable causes of action
It is a volunteer. The advantage which the law gives to
that equity which was prior in time, under the maxim “out
prior eel tempore potior csl jure," may bo easily lost by n.iseo,,.
duet, fins voluntary intrusion of tho plaintiff is niiseon.
duct which added to tho misconduct of its assignor (known
to it), deprived it of tho title to consideration which courts
of equity may accord to such as do not volunteer to buy dig-
puted rights. The intelligent oye and comprehensive mind
of equity does not permit itself to be bound to tho title of
a wrong-doer, however loudly lie may chant somo favorite
maxim of equity. It is tosuch a state of facts again that
ir Bispham refers when lie says, “In examining into the
relative merits (or equities) of two persons having ad-
verso equitable interests, tho points to which attention
must ho directed are these: Tho naturo and condition of
their respective equitable interests ; the circumstances and
manner of their acquisition, and tho whole conduct of each
party with respect thereto. If the inquiry bo directed to
these grounds, „ decision on the narrow point of priority
of time w.l seldom if ever be found necessary ;» and, in
he same section (171), "as between persons having only
equitable interests, if such equities are i ill ode re , I
equal, lqui prior est temnnrp • I T1, I * .
I nothing else in the caso to turn the scale , and the only
11 before tl'0 Court is tho bald fact of priority of time,
“of course will be conclusive. But in practice tli’i
“ scarcely ever the case. It almost universally happens
"two other questions have to he taken into consulcration-
question of laches and that of notice. If the first
| “ cbil8or llns been guilty or laches, his equity becomes i
’ “ r‘01' 10 Ibal of the second purchaser, and tho equity of
" latter will then prevail ; for priority of time is tho
“ ground of preference resorted to, and will never bo <
■ “ sidered if there is anything else to turn the scale. Oil
i " otbo1' bnnd, tho second piirohnsor may, under tho oirei
| “ st.miccs of Ibo particular ease, be in the position to a
| " himself of the plea of a Iona file purchaser for vnluo w
, “ out notice, and it is now well settled that such a plot
: " available for tho protection of an equitable as well a
i “ legal title."
’ 8. That tho defendants, if they are upon tho facts h
i M> pitreluisors without nolico, have taken s"oh a" intci
that the process of this court cannot bo availed of to p
vent them from consummating nnd completing that inter
; by receiving lettors pntont.
j Assuming thoso to bo correct deductions, I ask yc
t Honor's nttoution for a momont to tho testimony ns
1 tho lime, place, degreo and circumstances of tho vnric:
notices to either party— which are asserted by tho oth
Following still tho order or time we have lirst to do wi
> Harrington, who now claims tiint ho was in Fcbritm
1878, and for a long time before, invested with an cqu
able interest in tliosu inventions entitling him to rccei
tho patents for thorn when they should issue, Edison tel
us, and the matter has passed without dispute, that fro
tbo very beginning of his negotiations with Orton to the
close, nnd throughout tho whole period in which the woi
provided for by them was going on, ho was tho intimn
friend and nssocinto of Harrington, calling almost daily i
Ids place of business, nnd that from tho first nnd constant!
Harrington nnd his associates wore informed of all tho rel"
lions between Edison on the one hand and Prescott and tl
1 Western Union Compnny on tho other. That Mr. Ha
noting upon wli.nt wo supposed, and (lacking notice from
liim) had a right to suppose to bo a legnl contract, and were
granting special considerations to Edison, may bo taken as a
thing undisputed.
The notice which Harrington had, therefore, was actual,
leaving no room Tor doubt; was early in time, giving no ex¬
cuse lor laches, and was such in all respects as to awaken
him ill the fullest degree to the peril of the right now set
up in his name. Harrington was well notified.
Tbo next material notice protended is that by Reilfto
Orton ; it is not my purpose to criticise at length the testi¬
mony of Hr. Iioiii: Tito Court is aware, from his own
statement, tluit although testifying hero ns a witness for the
plaintiff, ho regards this notion as practically prosecuted for
his benefit. Ho bcliovcs that tho title to the quadruplex is
still in himself and his associates, and not in the plaintiff
The plaintiff is, therefore, according to Ids view, prosecut¬
ing at its own oxponso, but for his use. How far the ex¬
istence of such a belief, and the motives thence arising, may
have a fleeted tho mind and testimony of Mr. Iteiff, will he
judged by the Court, ns it rccnlls tho somewhat peoulinr
circumstances of his examination, and applies to him the
general experience which wo have of mankind, when noting
under tho influence ol groat pecuniary interests and strong
personal feelings. Tho testimony of Mr. Jicilf, so far ns it :
needs to bo considered by mo, was meagre and gonoral in
the extreme. Tho indotcrminntoncss and generality of the
terms under which, ns lie now tells us, lie sought to convey
to Mr. Orton specific notification of n pecuniary interest for
which he says lie and his associates have paid hundreds of
thousands or dollars, loads mo to doubt whethor it would
over bo quite judicious to solect Mr. Rciffas tho menus of
convoying important notifications which it is desirnblo to
have understood. There is another explanation which,
however, I r.m loath to apply to this gentleman. It is well
slated in that excellent now work, Wharton on Evidence
411), that “fabricators deal usually with generalities,
avoiding circumstantinl references which may be likely f|
to bring Ihoirslnlemenls into.collision with other evidence. I f
A careful avoidance of delnila when persisted in on cross- : J
' examination was one of tho causes of the breaking down
h of tll<J witnesses against Queen Caroline, and such avoid-
“anco is always suspicious." Mr. Reiff’s testimony (r0lio
1490) is repeated throughout in almost tho sanio
words. Ho says lie told Mr. Orton that Mr. little’s
inventions "were controlled by the Automatic Tele¬
graph Company in connection with a contract with
“tho National Telegraph Company, and tint all Mr
“ Edison’s inventions wore controlled by Mr Harriii"'-
"tou, in tho interest of Harrington and his associates and
“ of Mr. Edison." The Court will remember that this testi¬
mony relates to an interview brought about by some diplo¬
macy botweon tho witness and Mr. Orton, with tho view
that it might bo ascertained what the Automatic Telegraph
Co. had to sell which tho Westorn Union Co. might wish to
buy. All the proof in tbo case tonds to show that tho
Western Union Co. could not lmvo supposed mid did not
suppose it had nny interest to purchaso of tho automatic
concern, except to romovo that competition which, whon
prosecuted with sufficient publicity and financial skill, 1ms
tho effect to depress tho market valuo of shares in the com-
peting company. It is a part of tho duty of Mr. Orton and
Ins directors to guard the property of their stockholders
against those market depressions by all proper means. I
shall not endeavor to onforeo, by nny nrgumont whntovor,
that interpretation oftheso words oflloiff, which wobcliovo
to bo true and honest ; nor to overcomo that interpretation of
them put upon them by tho witness and tho plaintiffs, mid
which, I griovo personally to say, wo believe to bo untrue
and dishonest. I shall only road tho testimony of Mr. Orton,
which is sustained by evory consideration of probability aris¬
ing from tho known condition of tilings at that time, and
from tho undisputed facts of tho case. Your Honor will re¬
member Ueiff’s effort to exhibit Mr. Orton as an anxious
inquirer for tho best means to obtain tho control ortlio'auto-
matic system. You will remember tho coyness to which
Mr. Orton alludes, with which Mr. Reiff received him, and
his repudiation of nny idea that the automatic was for sale.
You will remember that, during all this time, Mr. Orton
was beset by attempts and indirect influence, first on him
11
and, failing ,n tlmt, upon members of l,i. board of direct™
bv Dnvidgc, tbe agent of Harrington, and by Craig to buy
the automatic; and you will not fail to reeolleot tl.e surprise
J IvZb UP°" t,,<! °U,Cr,Si‘1c ^^’’s letter, dated
July 24th, was produced, m which ho anonymously en-
donvors to spur Mr. Orton on by hopes of success and fears
of personal oss to renew the negotiations of June. Mr
Or on had allowed htmself to be too easily discouraged by
8 h'gh .t0nc’Im‘I. l,.lis «>M -’nit Mr. Rciff’s purpose
at all., Having all tins m mind, you will also recollect Mr.
Ortons very clear statement that lie never regarded the
automatic system as of any value whatever; that £ told
lfi7. '°n ho "'nnte'l to borrow money upon it in July
^loonn'n h°|d'‘ oonsidor tho "'Ilol“ thing worth
$10,000, though it might bo good security for that amount-
and that h.s motive in seeking an interview with lieilf was
" dPnn0,PI'IS‘,,e bC‘,ind th0 P «rs , t of
agents, and thus, once for nil, to put mi end to it in oun
wiy or another. With that purpose in view novor having
on mu"1 SaE.'T •"3'tlli,lg °f lh0 rul'“ions °f W-rrini
ton and Edison; having no reason whatever to suppose
tbnt tho improvements which Edison was at that moment
oagage in seeking for in the Western uZ. Z £
dnnlu 13 vnr‘.ous Ml»trumeiitnlitics, were involved in a!iv
doubt or question, he n|iponred at tho ollico of Ar.- B„rnJ
S ilt TTt 8 <!a,l•lcd, on 11,0 slnml’ 10 ‘ho evidence
ti01 ‘ J X r’ 1,.° ®olllr“ll'0ted some, mid iillirn.cd some pur-
, 0 'ti and then the examination proceeded ns follows-
- tss ir; ■ t, 1 tctt ”*
Nothing 80 understood by mo. Q. Wo 1 w.m Invil
“said buul| re,no"ll,er ‘I'at’ anything m
“ duplex and its possibilities wns mine. Q. In this convor-
11 nation did anybody claim antomatio? A. Yes, sir; Mr,
“ Beifl' claimed tho automntio. Q. Did anybody claim tho
“ quadruplex in this conversation ? A. No ; I don't rcmcm-
“ her that quadruplex at that time was tho subject of con-
11 vernation. Q. You said, in general, duplox or quadru-
“ plox. A. I claimed duplox and its possibilities. Q. Did
“ Mr. Boilf or Mr. Harrington on any occasion clnim to you
“that they owned thu duplex inventions? A. Never. Q.
“ Did they ever clnim to you that they owned any invon-
11 tions other than lltoso patents which wore in use by tbe
“ Automatic Company?" To this question Mr. Orton an¬
swered, “Mr. Beilf never did make such clnim until tho
“year 1876, and I did not make any such claim at that in-
“ terviow." Later on Mr. Orton said (fob 018), “A. I desire
“ to repent, in answer to this question, tbe answer that I
“ have previously made, tbnt tho only inquiries put by mo
“ touohing Mr. Edison’s patents related to tho patents that
“ Air. Boilf hud informed mo wore held by Air. Harrington
"relating to automatic telegraphy.'’ .After an extended
scries of objections the Court said (fol. 852) : “ It is per¬
fectly plain how tho witness stands with reference to tho
“ muttor ; that ho understood that tho whole subject matter
“ of the conversation wns automatic and nothing else,
“whatever Air. Boiil’ may have understood in regard to it,
“ and I do not suppose that all the questioning in tho world
“ will elicit anything dillbront from him."
The witness: “That is my understanding, your Honor."
And in folio 060: “Q. Stato whothcr, at that tune, you
“ Imd been informed by anybody that thore woro any prior
“ claims to any inventions of Air. Edison, except those you
“ have spoken of as in uso by the Automatic Company, or
“ to his sorvioos in any way. A. Tho Gold and Stock Tel-
11 ograph Company — with tlioso exceptions I had not. Q.
“ And Mr. Edison was at that moment engaged in your
“ oilice, and at work on the duplox, 03 you understand, for
“ tho Western Union 'Holograph Company? A. He wns on
“ that day— at tint very tun -. Q. And had boon smoo
“February, 1878? A. He bad been sinco February, 1878,
“ less tbe interruptions and lapses that havo been previously
f
mmm
“ of the kind. 11 7 ^
“ Iwvo such a desire” Thh/wns „ . S'°" for 1110 10
[PInimin; fol. 1127.] .IQ D dTot Mr i ^ >’ r,il'0,,tol-
;; ti,at M. 0^ecr^^ /-*
::crsi i*- ** ,«ns« t1?
■-:r; t tr- B ?- » »» *■■£
; Eoirr .over «,m „ m 3* “'■
" til' for t,M,r “1 N|’ ""y °l,liln °" ^!'«rfor Mr. n.rrim.'
foi anything but automatic patents." fc
in Juno, TsLZ7lbT' W°h7 l0°Clhcr °n t,M
nwnro that the oU.cr u a " • ' l° b° ,rUB' ho
isiaiPSI
winch "ivos to him ^ tuw °* l**° 8a,no agreement
nou ,d l iV^ l IC'° aUt.?",ati° P"to'"« which wo um
sssMaffiSSS 1
“which is a partnership contract botweoa Edison and
Ha,ri,.atoiil under which Edison is bound to hold for tho
“ intorost of tho firm nil the inventions which he may
“ possibly mako of anything which relates to any system
" of electric telegraphy."
Such a warning would havo boon honest, fair and credit,
able. Perhaps I might say more— that such a warning
would certainly havo been given by any porson placed
umlortho circumstances that Mr. Keifl tbon was, and really
having in mind tho things which he now professes ho had
in mind. On tho contrary, from adopting this course ho
tells us that duplex and quadruplex were not mentioned
oven, am! that ho rcstod his notice to Mr. Orton in an
answer to a question ns follows: (PIIK, fol. 1489): “Q.
“ What was tho subject of tho conversation ? A. Mr.
“ stated to mo that Mr. Orton desired to soo
“ ,nu concerning telegraphic matters. I mot him and
“ho desired to know who owned and controlled
" tho various patents that Mr. Harrington was con-
“ r.cctcd with. I explained to him how tlioy wore
11 controlled. Q. What did you say in nnswor? A. That
"Mr. Littlo’s inventions woro controlled by the Auto-
" malic Telegraph Oo., in connection with a contrnot with
" the National Toletrrnph Oo., and that all Mr. Edison’s in-
“ ven lions woro controlled by Mr. Harrington." Ho left
Mr. Orton to make his own application of tlicso delusive
terms. Within tho principles of tho eases which havo boon
oiled, the obligation of good faith was upon ltoifif, at this in¬
terview, to make suro that ho was understood. His nogleot
to do this raises every presumption against tho good faith of
his pretended notice, and puts it upon the plaintiff: when
relying upon it ns constituting, so to speak, a muniment of
title, to nialco it good beyond poradventuro.
Tho noxt notice which, in ordor of time, is protonded, was
to Mr. Prescott. This again was one of thoso accidental
notices out of which nlono tho plaintiff seeks to mako its
case. Mr. Prescott being present with Sir. Edison, at the
oflioo of Sir. Sorrell, after the agreement of July 9th had
been signed, and the parties had entered upon tho perform¬
ance of it, Mr. Sorrell oasuully remarked, having reference
to tho proposed modification of that agreement under date
of August 19th, substantially, « There is an agreement on
record between Harrington and Edison: hour does tint
«neet this?” Mr. Serrell tells us that there „ si, £
tit 1 1 co Lis response from both Prescott and Edison '.i
related solely to the automatic. I should not n s ‘
cuss this notice at all were it not tint it ,1 ,
to charge Mr. Prescott with any nmiee
f“‘; Prcsuott is.t,lu» the owner of a leg.dim
°! valuable consideration, ami without notion wl.mi,
a" H,tof T °'-y r‘nt b0"Uf!0iil1 i,Uerust "’l,iol> '‘■'isos from
° 1 .'^ Participation in proceeds, but includes also tho
2 , ‘ l° L V ' U’dU 1 U|)°" 1 C‘ ,or ' <■*■ of I disci's
Tho vibm n <i ■“ 113 S 1111-0 "’ltll011t 1,10 consent of Prescott.
Ihe value and m, porta, ice of this covenant will at once bo
"as a covenant put in for tho protection of Edison
Welter,, U Prusoo“’ l''° electrician of th
Wester Union Company, might, when patents wore i«,,od
license that company for a sum satisfactory to himself Tut
ins.msfaetory to Edison: in which ease, thoro boiim no ac-
; S °r011 .tl7,n' ^ ^li,o„ would prnci.
now stands for 1,,s mvu,,tio'1' covenant
, . , lds for 11,0 protection, of Prescott; and the nhiimiif
being chargeable with notice of it by its record Sft
a suff,eient nolice ,o him of
bought from iiHiilt
volitions but |,o bought that intorest in „ title conditio, led
i^llm widyif7,!l"11 Iimiled by >' “
M S so that, without tho consent of Prescott, no purchaser
d toko any interest in it at all, especially no ZZZ
has r eirr81"1' ” thU And no Inch
" ° : . |b° p0rmitt0(,> ‘kwngh the forms of law, to
feat this substantial beneficial arrangement, and im
£ iT Mf PrCiLOtt th0 ri«ht 3011 ''is interest, i
i^Kiismm, ° 3 !UOrOSt to n l,urol,n*er who, obtain- j
to°nav the l, , .n0r-iU1 °n‘!,r0 monoP°ly, could therefore afford
SainUfl • “,! SMr P ^ bUrd°U ^ Proof beiny upon the j
Mr Serrell i.Y lmv,"S positively contradicted f
Serro11’ auJ oxpb'|ned that tho con vernation referred to ;
8?
was one which took place in January, 1875, and tho plaintiff
having recalled its witness Edison, who is said by Serrell to
have been present oh the occasion, without asking him any¬
thing upon this subject, wo may assume that this piece of
proof has failed. If so, it would not seem necessary for
tho Court to travol further in the consideration of this case,
for, if the right of Prescott to have patents issued to him¬
self and Edison is impregnable, then the prayer of the com¬
plaint to restrain tho receipt of such pntents must bo denied.
I shall not detain tho Court by any comparison of tho
ovidonco of Mr. Sorroll and Mr. Prescott, as I might do if,
Mr. Sorrell’s recollection of tho fuels being admitted, I
thought any notice ensued from plaintiff; although from
such comparison it would easily bo soon, I think, that Mr.
Serrell, who is, as I understand, quite nbovo reproach, has
confounded two of tho numerous interviews which, during
several months, ho had with Mr. Prescott upon this subject.
But suppose him to bo right Of what did his remark
givo notice? Am I bound, upon tho onsunl roinark of a
stranger that there is in a certain trunk nn agreement be¬
tween another person and one from whom I am about pur-
chasing a horse. Must I tako notioo that this is a bill of
sale for that horse? Or, suppose I answer “That is a re¬
cipe for a secrot nostrum i3 that answer to bo taken as
proof that I have road that recipe, when it afterwards turns
out that the communication of tho secret is therein named
as tho consideration for thosalo of tho liorso? When tho
most likely way in which Prescott should have obtained
his information was from Edison, will tho law raise up a
presumption that he obtained it by inspection of tho record,
simply because that would better suit the plaintiffs pur¬
poses, ns it now understands them?
Wo come now to the attempt to charge tho Western
. Uninn Company with notice of Mr. Harrington’s claim,
through tho statements of Mr. Craig, plaintiff in nn notion
against Hnrrington. Mr. Honncii, a highly respected mem¬
ber of this bar, informs us that his oflicc register contains nn
entry under date of October 18th, 1874, to the effect that
ho directed a copy of the complaint in that notion, accom¬
panied by ncortniu written notice, to be served upon Mr.
“S,g OrS,C C,0mi>Ia,’nt.
“mo ^ ‘nSZitZst
No witnesses are forthcoming,^ l o bUt tt 01 *'«•
upon him. Wherever lie saw h '< ■ . 8 actl,n* service
?“! not ren<1 i(- Craig and Ifnriincton"'10 "T'0 tlla‘ >»
‘ rival claimants to oorta n W*n,.both known
w "°h both had been trying to I‘ " ‘ C ’ ,n al,l™"‘lic,
mean to jiurchnso from either and I. '""'i As *‘o did not
quarrelling, ho had no occasion ' ‘°y "'cro n>",aya
the pleadings in their notions. Tho noT ' iOVOr ,0 rea<1
Western Union Telegraph Com., "'blressed to the
«™ (Plaintiff's Jixhii avi l ' 3’’ ,°r wll0'» it may eon- :
‘bnt it does not opcrJo L\' £' be «»* <o show -5
1,10 p"|”“ * '.«■ «». >. .r“"g'° ,'s
“smwm WM'-ar o, Mw Yn„,°"" i;
" au,1Er' H> CliAI° and James B. ] ' i
11 Bnowir, I
“ Oeobob Little and others.
1 under, °nnd0thy virtue ofiTsTdV ^ Srap,‘ Comi,a'^ «■
monts, and obligations „r r d i uut,“> uo"traois, engage-
Etlison, and Tl.mnas A.
operation of Jaw, entitled o’ dr n°i “"d vo, b,ll> nil(1 by
‘o the said company 0f the righto and"' r°00iV0 “ lr“ns,ur
George Harrington' and ThJ t a A "t"!1™*1*0™* «W
Wftfef to Thomas A Ed " r‘ 1“°" «*• /**
contrivances for use in elcoir ? f°r ohu,,CMi »'«««*, and
volitions made exclusively fo a «'"» -»*
er«ph Company. lI!e, GAolli ««d Stock Tele- .
t Sirriir.,
L,s 01 all tile patents
:?! " Slanted to tho said George Little for improvements in
“olectric telegraphy,"
I If Mr. Orton had read this notice lie would learn from it
I °"b’ «;bat ho know before, that certain patents already
I granted were claimed to bo hold by Harrington. He would
f fbw learo what ho know before, that they were said to be
% '’eld ill trust for tho Automatic Telegraph Company. He
\ ''’oul(1 lnvc learned in addition that that Company, through
I the offices of Craig, the plaintiff, were now seeking to have
ij l,1at trust practically declared. Ho could have learned
;! "dbb'e more, tor nothing more is here contained. Neither
m tins notico nor in tho acoompniiying bill of complaint is
t lauguago made use of which would have suggested to
I n auspicious mind that tho eortnin incompletod inventions
; (for which patents had not been granted at all) whioli were
, thon being made for him at his oxponso and by his means
■5 and facilities, wore olaimed to be covered by this general
: claim to tho joint interest of Harrington and Edison, in
pn tents granted to Edison tor “ chnnccs, means, and eontri v-
“ anees for use in cleotric telegraphy." In short, if ho lmd
road it, it would have informed him simply that Craig noti¬
fied him that ho could not safely deal with Heiff or Har¬
rington for tho Edison patents which they had talked about
in Juno, because tho cestui qui trust, tho Automatio Company,
was not now about to establish a claim to them.
Boing in evidence, this complaint furnishes, howevor,
instructive reading, tending to give to us a more complete
idea of tho condition of things in 1870 and 1871. And
from it will appear not only that “fast" telegraphy means
automatic telegraphy alone, but that in nil tho negotiations
and doings of those pcoplo during those years, tho one sub¬
ject of automatic or chcmicnl telegraphy occupied all space.
The paper was road, doubtless, to charge tho Western Union
Telogrnph Company with knowledge of tho agreement of
tho 1st of Ootober, 1870 (fob 168, Plaintiff’s Exhibit in re¬
buttal). If Mr. Orton had been bound to read the whole
of this complaint, ho would have learned simply that that
agreement had been cnee made. He would not have learned
how long its obligation continued; and having seen Edison
for two Drtteoyonre giving In's « lime and attention hi.
nls .ind inventive powers, " to business and interests ml,
jn^ot, abandoned. Certainly
nint .I.
st - .isr si,cn°°
t the same wl.nl, „,. i „ i , , Ulu Person possessniL>
— ™ ;riv" t- ~j
tbo lncubrntioiiH of wh on, soever may clio.' S !• ? ° I
servo upon liiin expressions r,r i ‘.L ° I” ht !lll('
cover whether o n ,<,e,ls' "' r,rdl!,• t0 dis-
I ilgPlSi
•”f «»«*, tofa'
defendants !wtb notke ' “r "m ‘'i™ eff,,rta to diai-e the
'“'so wl.ioh “ ”2, 11” '"«*■
K5,:™:aiU
1 hunt ill of Ihc defendant’s rights up-
91
pears to liavo been admitted, no offort having been made to
break the force of tlio statoinonts of Roiff and Edison as to
the fulness with wliieh tlioy informed Mr. Gould of tlio ex¬
isting state of things betweon these defendants and Edison.
Of tlie representative character of Mr. Gould there can
bo no doubt, and it is assumed there will bo no dispute. If
Mr. Gould was tlio agont of the plaintiff, then his knowledge
and unfair dealings charges thorn. If ho was not, then, as
his payments arc the only ones which liavo been shown to
havo been made, no consideration lias passed from the
plaintiff, who thus fails to show itself a purchaser for value,
and turns into a mcro voluntoor. Either , horn of this dilem¬
ma is equally fatal to this action.
It romnins to consider tlio clfout upon tlio plaintiff of a
knowledge of tlio contract of August 10th.
Tlioy wero informed that Edison was to hold title to
letters patent for his inventions by assignment from himsolf
to himself and Prescott ; a method which may appear opun
to criticism in points, which do not at all concern this
Court, so long ns that method is satisfactory to the Patent
Oiliee, by wliioli it is prescribed, This instrument is in tlio
form prescribed by thu Patent Oiliee, and lias tho eil'uot to
charge the ostato in the anticipated monopoly witli the con¬
ditions established by the contract betweun Edison and
Prescott. Among those is tlio stipulation that neither shall
convey any interest in thu inventions or letters patent with¬
out the consent in writing of thu other. That condition
having been made for the protection of Edison, I do not
suppose it will bo denied that if Prescott hud sought to
break it by conveying his interest to thu Western Union
Company, your Honor would promptly liavu restrained him.
At this point it may bu proper to correct the often-expressed
error of counsol ns to wlmt Prescott has done. Mr. Proscott
lias done absolutely nothing with tlio Western Union Tele¬
graph Company, oxcopt to assent to the propositions made
to it by Edison. This olniiso in tlioir agreement is con¬
sistent with that public policy wliiuli authorizes this kind
of monopoly ; and it seeks only to presorvo in a valuablo
form tlioso interests winch the law creates. It is not
to be confounded with covonnnts in restriction of trade.
“pi'ivo himself or the C J r d«-
‘It by „y cL^i 7 ,nb0Mkll,-w
;;On the other hand, public policy Quires "£
„ 1U1 ■' 1111111 >'0*, by skill, or bv mv , ,
'"cmis, obtained something w|, oh JL }, °ll,.°Ir
“ lie should be at liberty ^ «,H It u ’
«im«gooua wv in the market; and, insert
« tne?b “ ',m 1080)1 <ulvtw.tngeou.Viu the „
11 0 {’"rchnsor. I„ „°i, „ eVTl!V'a
■ ;*£S, “» - - o,t:z
:sr, »^Ss?Jlas£t
" i* 7 ' ? ? Y stlln,In,io». however restrictive it
“ the Cour.° 1 lnt l'03triolio"- 111 tlio judgment of
m,f ’ “ bt'f 4 ? 15“ Green 350, defon,
met or a J , "V «<3knnwlo,I«i.,g
:S:r
should not nssirrn ,i, " l)lovlsl°" Hint K
,n0llt, S,g" 1,10 00111 wot boforo tho improve.
Siller . . .
Cr^^MSays
“ all stipulations complied with, the contract shall
f not bo assigned oven in equity. It must he held,
11 therefore, tli.it the assignment maile in express
“ violation of the contract is void, anil tho complainant
“claiming through such assignment is entitled to no
“relief in equity."
Note. — This ease was reversed on tho ground
that tho provision was inserted fora purposo which
has boon substantially attained.
C C. 13. Groan, 610-511.
[ will refer counsel nlso to tho following authorities:
A limited covenant not to assign — ns hero the
mutual proviso not to assign except on the consent
of the other parly — will bar a bill for spooifio per-
Ibrmnnue brought by an assignee.
Wenthernll vs. Georing, 12 Vosoy, 511.
Grant, M. II.: “ What is tho nfl'cotof an agree-
“ meat to assign, whore tho lease is not assignable,
“ without license of tho landlord? If tho land-
“ lord does not give tho license, tho ngreomout
“ cannot be carried into execution. Tho lessee mny
“ subject himsolf to nil action, hut that is all. A
“ court of equity ennnot consider that ns done
<‘ which, if done, would extinguish the very sub-
“ jeot of tho contract."
Parkhurst vs. Kinsman, 1 Blatoli, 488.
“ A ponton who has notioo that the authority of
“ a partner is restricted ennnot hold tho firm liable
“ if ho chooses to deal with that partner in a rann-
“ nor beyond his authority, as restricted."
1 Lindloy on Partnership, 2d Eng. ed., 833,
" The eonvoyanco of his undivlrtc.l i,ltorM(
:*^£"rSP*:
“ B"^rior t0 «•"» field by tlic' vendor.” "g "
Fnsoinai' on i Co-tenm.cy mid Partition, « to0
eitnig Kistnor vs. Sindlingor, 8i ImJ
JMgnr vs. Donnelly, 2 Munfbrd, 287.
Hox.ow.Crr.1 Stunner, 17-1.
n 'ni« go vs. hast River Bunk, 26 N. y., '
Wostorn M. MneDermott, L. 11, 2 Cl.., 7->
C.UtWTourlc-,T,B.|4O,lii04
“0° ‘efTi Wollil"^ «* Union Bail way I
Co., 11 Gray, SOI, 800, 307. y •
I
"'O'e teen lie, gilt rr Lotd,;,Stl b,,i.ld!"= <'
bis ptirclinse. rcfi,so 10 or''nP'<=‘° |
Joflrioa vj. Jollries, H7 Afnss., 180.
m rot need in the deed by the technical
Oo
“ word 'provided,' does not innko it necessary to
“ give it a technical meaning and cfleot, if tbe
“ context and general purpose of the deed indicate
“ that it tvns not so intended (Chapin vs. Harris, 8
“ Alien, 189). It is only by taking it out of its
11 literal connection and form, and regarding it in
11 its relations to the whole scope and subject
" matter of the conveyance that effect can be
" given to it in a reasonable manner according to
“ dm apparent intent of the appointee."
Morse Twist Co. us. Morse, 108 Mass., 73.
A covenant cannot bo in restraint of trade which binds
a selling patentee to do his best to make further improve¬
ments in tho invention, and not to aid any competition in
the business. Tho futuro inventions, if pntcntnblo, would
be secrets, and “ tho public has no rights in the secret."
Tho Court say : “ Although tho defendant
" (patentee) did not technically bocomo a partner
" with tho plaintills, yet ho becamo the associate
“of the other stockholders in tho business, ho
"liimscir inducing them to join him in it, and hav-
11 ing a largo interest in tho formation of tho com-
“ pnny ; and the same principle that enables a partner
“ to bind himself to do nothing in competition with the
"firm ought to bind him (p. 76).
"Tho defendant could not have obtained the
“consideration which was paid him, if it had been
“understood that this contract, which ho hns vio-
“ luted, had no validity. He is appropriating to
“ himself a part of that whioli ho lias sold to the
“ plaintills, nml which is valuable to thorn. It is
“ unlike tho ensos whore the prohibition oxtonds
" beyond what tho interests of tho purchaser re-
“ quire, or is in any way unreasonable. Tho Court
"are of opinion that tho contract is valid" (p. 77).
There is nothing contrary to tho policy of the
laws favoring trade, in a covenant or condition
not to soil or assign without license ol
individual
11 particular:
Wl.ore a lease eonlains a provision against assim,
n,ent without the landlord license, tlm Z L fe '
P.SS0S with the interest, as an essc^J o
oven at common law, in the form called a cov
cnant running with the land.
WtUn, s a ] ,e j ]{ Q
Bench, 740. 1 W
„ 2T"-"11 is a" oppress covenant ns to who
" S r am\ooouPy 11,0 ln'«l, and it is inserted
“ nriSd or°"' 1 tllC lnnd,ori s,'"» lie dc
“ t o0 ,:;0'??3 10 U'lm sllil11 b0 s,,I>stitntod
1
snS^-F&ziZ:-
S D°Q0X' 1?M,or & Jones, I
Whore the Court puts its refusal m • I
*s^»=S !
tno ^ purpose ol assuring to himself the selection
of, tlm person to whom the lease .Ml
oilJe2MT„S!sT;i!,m}' b0de?U0n(l 1,10 ffoneral prim
lirovisions, „o matter ^ whnt r"U ' "°tl0° liny r,’stl'ietivo
a conditioned SJVK wZll°;T'i 'B V""* m"ku
Atly*1 “■ ”r *
'*“■ t*“‘ >'»■« i.™ itii ss
il ho considered, and contrasted with the character of the
H rights assorted by Harrington under general executory con-
||' tracts made anterior to those inventions.
Some confusion has appeared to mo to existin the minds
|| of counsel ns to when a right censes to bo equitable and
4 becomes legal. This confusion must always exist until it
ij is clearly understood that an equitable right never censes
■i to be an equitable right, and that a legal right never begins
■ by being an equitable right. The classes are to bo sepn-
i rated by degrees which cannot be passed over. An imper-
if feet legal right is not, therefore, an equitnblo right The
|;| term “legal right" is goncrie, signifying a class of rights
oj founded upon or recognized by municipal law. It inoludes
1 equitable rights, tho term equitable having a qualifying
‘ effect, and signifying a species of legal right arising from
/ facts specially cogniznblo by tho Court of Chancery, such
ns those involving fraud, accident, mistake, trust, etc., in
/ all which cases the remedy is to a certain degree sought or
,, enforced through tho conscience of tho party. Applying
i this definition to interests lilco thoso in question, it appears
:! clear that tho right which nil inventor has in his invention
Is is essentially a legal right ; it does not in tho slightest dogreo
pnrtako of tho nnturo of equitnblo rights ; and this is tho
same whothor boforo or after patent granted. His interest
is an inchoato legal interest, and his right an inchonto legal
right. After patent granted both become completed ; but
tlioir proper scientific classification is among legal rights at
nil stages. Tho right which an assignee of an invention
takes whero tho patent is to issuo to him is also a legal
right, and the case is tho snmo whether tho patent is to
issuo to him solely or jointly with another porson. Tho
right which such an assignee takes by any instrument which
does not contemplate tho issuo of tho patent direotly to the
nssigneo is an equitable legal right— that is to say, a legal
right cogniznblo by a court of equity, beoauso tho law im¬
plies a trust in tho inventor, to roceivo tho patont for tho
benefit of this equitnblo assignee ; and will onforoe tho
remedy through his eonsoionce, as by requiring answers
under oath to interrogatories in tho bill, etc. Tho right of
Edison to a patont rests solely upon his expectation that tho
letters patent. But this is , Jin '2'" t'10 cnji°3',n°|it of |
i"g Which I think it may bo^ntT 'nbl° *1«1!** oonccr"- I
never of imperfect tight is |
>t >s one of which Chancery can and . ‘jPy‘”!S lmt !
cognizance. The legal right is LT!\ V f"k° °neot'vo -
there are facmTo °sunport 'tile V-^ In"' rci:ognii!CS ("'hero ;
requiring for its com,L,n ,.1'0 0,wm) ns equilnblo right
meeting the party to do somo"aohh,WC"t " j"dieiul ,Iccreo> di‘ ;>
clniins also’Ln'cq^fn^ Cl‘"'ms ll,ro"Sh Horrington,
ablo right; aitl^ouLdMl'e'' C01npa"'V oIninls "lso "n cq>»t-
to it. g^es’rise o m s S: r)'n"°U °f 187C’ by E^°»
in this action, whether d n , "°7snry to ta “"^idered
has not passed. Cs“ rlg,lt to Edison’s interest
f Prescott claims a legal ritrhL
means of „ « , it attacks by
(«s alleged) derived fro rr nqutty prtbr in point of . e
lac/m hefore ho assigned ? "f10"’ "'ho had lost it hy
from Mr. Goul 1 „b m tet t 08n,„ "llerollt derived
of Prescott, and the eonii.il.l to 1,0 logaI interest
Company of loth of lit, 1 1 t fg,lts of 11,0 Western Union
cha cl ' J °f WkKk hc hadM notice when he pur -
* ■■»*»« .m t»
which I have already cited! 0X,"n,"nllOn °f 11,0 aut!l°rities
89
There remains to bo considered within the general plan
of argument which I had laid out for myself, and which
contemplates leaving to my associates the responsibility of
treating the case in a largor and yet moro critical way than
time permits mo to do, only tlio question under tho statute
of frauds which has been suggested. Wo wore notified
early that the contract pleaded by us as arising from tho
proposals of Edison and Prescott and our aceoptanco would
bo challenged ns void under tho stntuto of frauds. Tho
application of that stntuto to these faots is not easily to see.
Tho original contract was for work, labor and services.
Tho assignment of patents was an incidental, although es¬
sentially neecssary tiling for tho full onjoymont of tho work,
labor and services thus stipulated for. The point has
recently arisen in tho State of Massachusetts, and tho lan¬
guage of tho Court there, which, by tho way, is not limited
to tlio terms of tho statute of Massachusetts, ought suffi¬
ciently to dispose of this objection. The Court said :
“ Tho words of the stntuto have never yet been
“ extended by any Court beyond securities which
“are subjects of common snlo and barter, and
11 which lmvo a visible and palpable form. To
“ includo in them an incorporeal right of fran-
"cliiso granted by tlio Government, scouring to
“ tho inventor and his assigns tiio exclusive right
“ to make, vend and uso tho article pntonted, or a
“ share in that right which has no separnto and
“ distinct oxistoneo at law until created by tho
11 instrument of assignment, would be to unrea-
“ sonnbly extend the meaning and edcot of words
11 which already lmvo been carried quite far
“ enough."
Somerby vs. Buntin, 118 Mass., 879.
Charter vs. Dickinson, 6 Man. & Gr.
Prescott vs. Locke, 5 N. H., 91.
Binnoy vs. Annan, 107 Mass., 94.
I have now dono all that I can usefully by way of recall-
Shakespeare taught my friend Ids lesson , and if |la u,,
. . -'‘■witai!
1 . r; "?:■
ftlien!, represented "by Jny’ooCk!" J*' U,ou-i,t ^
ft 1 ,t f11?"' ;*•» ^ *»&£& l*o i rz
%nt that bear is a soron-mr* !n‘rr J’°" ^ somc'llll"Si
) pot gim, O Tor n f ’ I.1.bi‘"lt yot ,10ll"'»S b'k a
■^bw 5J4‘K s:r r~ Iw! . *
O' ro , '“:2s;;',;™1 . . *
Jlie idea of Jay Gould and Providence in am-
tion of that kind m ,i xr ilx“wlil-
Hogarth could 1,,„ ' l ■ . ^otl""S l,llt tiiu pencil of .
O ton cl have done justice to that niolurc
-^V.V^e'j, V
I’isk, aro hung up onll.o rirf t7‘ f kmontcd lml'lner-
the Western Union Cm !° ^ Wlmt Wns vei'->’ obviolls.
over ability it 1 “find S’ T C°"lC"1 T"™' M
friend’s client ],„,i ? at ll0>nc, and that my learneil
States, and brought ?WC^>fc l l.° cjrc^° the whole United ,
■ ^ught ■■ere to Ins aid the most eminent ability
5
of tlireo great cities, -where ability lias been most prized and
most encouraged, in addition to three distinguished New
York lawyers ; he did not tell your Honor that, becauso
it was solf-ovidont.
One of the first things my learned friend said wns, that
his clients had the “ legal title." If that be true, ho has no
"binding in this court; nor can ho bo entertained here as a
suitor. His complaint, however, is framed upon the hypo¬
thesis that ho has not a “ legal title,” but an equitable one,
and that wo havo a legal title, which it is incquitnblo for us
to hold ; and, therefore, ho comes into this court to demand
that your Honor, sitting ns a Chancellor, shall override that
legal title in favor of the superior equities that aro sup¬
posed to inborn in his. If my friend is right in his argu¬
ment wo need go no further with this ease ; his bill must
bo dismissed.
'I'hon my learned friend remarked that this wns a
question of infringement for your Honor to detormino; and
upon the determination of which, the decision of this enso
was supposed to turn. But, if there bo any clear line of dis¬
tinction between the jurisdiction of the State Courts, and tho
Unitod States Courts, in respect to a litigation connected
with a pntont, it is that tho United States Courts alone havo
jurisdiction whore the question of infringement is involved;
and tho State Courts have jurisdiction, only becauso tho
question, of infringement is not involved. If it therefore
. bo true that this trial involves a question of infringement,
my learned f'riond is equally out of court, ns if it wore truo
that this wns a trial in which ho was assorting a legal titlo
in a Court of Equity.
Now, may it plcnso your Honor, what aro tho issues in
this ease? Wlmt are the titles in controversy? In tho
first place, there aro no pntonts at all involved in this con¬
test. Tltcro aro some applications in tho Pntont Office,
that may or may not ripen into patents; but, at
present, thure is no such thing as a patent in controversy ;
and thero is only one legal title, which nroso out of certain
existing inventions, and the assignment of them, by Edison,
dated August 19th, 1874, which vested Prescott and Edi-
son, jointly, with whatever patents might ho I
‘evontions described in tha! assignment "P0" "ls
Iho statute of the United States and t • •
Courts, very clearly specify the moment wo, thore" °f"‘0
u ^fi Vth«««in which that C
10 °f G°-V,T'
S-'oo of perfection which ontille ? V a“a",t''1 llwt ,lc'
; ; :: :,***»* °< > ^ J‘,S;
-V-
assignee, whose nssh-nmeut was of ‘“V0." bmilh'bt bJ «»
tho assignment to |.!m- |-f a o t0 Un,1L'1 ',,,llor
the law, as I have stated wttle.l
which only an invention enn’l'"1 l U ,,1Ul1 th° li",its "'ithil1
assignment. ' “n heoomo t,lu -«bJ««t of a legal
boo ,g f0 rs»:£: t ;;;t tl,orMftor ^ su
l-oises ho may hereafter bu’v ; and' if “them i"‘ "T* '° ‘7
«'V other reason than the'nn ’. of bo»°°|JJ<*i,on for
w;^ed ii1
jsiSitirr.s
7 .
Iaeoj and I presume it will bo urged by tho learned counsel
who is to follow me ns a controlling authority over tin's case.
Tho Commissioner of Patents, however, held that it did not
apply to this case, ns it clearly does not In that case, tho
question and the only question which was submitted to tho
Supremo Couitwns this: It not being denied that the as¬
signee, so called, owned tho original term of the patent, and
the patent having been extended by tho Commissioner of
Patents under the stntuto, did tho language of tho assign¬
ment convoy that oxtonded term ? That was tho only ques¬
tion beforo tho Court; and tho Court decided that tho lan¬
guage of tho contract, under which it was not disputed that
tho assignee held tho original term, was adequate to convey
tho extension. In delivering the opinion, thoro is soino
loose language used by tho Judge which, taken by itself, and
if wo did not know what it was he was deciding, would lead
ono to supposo that tho Supremo Court had decided that a
man who hod not yet made nny invention might oxccuto n
legal assignment of it, which, being put upon record, would
constitute and vest a legal titlo in tho assignee when nny
invention subsequently canto into existence. Tho Court, in
deciding that ease, quoted extensively from tho decision in
tho enso of Wilder and Gaylor, 10 Howard, to which I lmvo
referred, ns tho foundation upon which its decision rested ;
from which it seems to have been understood that tho sub¬
sequent improvements pntented by IIowo oxistod at tho
time of tho contract with Trimble ; but whatever may have
boon tho fact, no objection was mado to tho original titlo by
any ono. Tho only thing in dispute was tho oilcot of tho
words assigning tho extended term, wlueh has always been
held to bo assignable by proper words.
And ono word, your Honor, in respect to what n patont is.
Thoro is a great confusion of ideas in regard to that ques¬
tion. A patent does not grant tho right to make, use, or
vend tho tiling patented. The right to make, use, and vend
anything is a natural right That right is not curl ailed by
constitution or law in this country, however much it may have
been, at one timo in England, before tho statute of monopol¬
ies. A patent simply confers the right to bring a suit to ox.
elude anyone elso from using tlmt which, in the absence of a
patent, would have been open to the world. It gives tin S
patentee a standing in court— nothing more— to bring a law B
suit ; and byway of injunction, or by way of damages, to re- ft
strain or punish one who has used what he is excluded from fejj
using ; but it is not a grant to anyone to use anythin- $
. That right pre-existed the statute of patents, and is pm. P
mount to any statute. W
There has been an enormous amount of false reasoning in j&.
tjds ease, proceeding upon the hypothesis that these inven- ■
“O"*, are the subject of this litigation, are now in ' ■:
such a condition that anyone may not lawfully use them, if i tj
ho will. They are, sir, as open to the uso of the world as If
the air wo breathe. No 0110 has the least right or control if
over them. The time may come when they will ho pat- I
ented. If it do, thou whoever 1ms used them up to that ft
time must coaso using them, or obtain a license; but them is f|!
no recourse against him for his past use. The right to ex-
elude is cotcmporancous with the grant ; and any public
tiso before that timo can not bo made the subject of a claim, •i
by anyone, at anytime, cither before or after the granting of
the patent. And all this talk about Prescott's violating his .
agreement with Edison, by permitting t|10 Western Union
Company to use those inventions, is as groundless ns it is
puerile. Mr. Prescott lias no more control over the West¬
ern Union Company, or over anyone else, using these inven¬
tions, than ho 1ms over the freo air of heaven.
The legal- title, standing in the name of Prescott and
Edison, assignees, and trustees for tho Western Union Co,
limited by certain conditions in tho deed, whorohy neither
can part with that title without tho consent of tho other, is a
iogal title to tho inventions, strict and pure; and it is the
subject of this controversy, and is sot out in the bill; igj
and no relief being asked against Edison, the remedy sought i
is that X rcscott be enjoined from taking tho patents when «
they are ready to be issued by tho patent oflice; and that he
uo enjoined from convoying them to tho Western Union
Company ; and that Prescott and the Western Union Com¬
pany be decreed to convey their legal title in these inven¬
tions to these plaintiffs.
The strict legal titlo in this enso is in Edison and Prc*
9
cott— Edison not being a party to tlic suit— and that titlo
stands like a wall of adamant before the counsel on the
other side. Until they break it down, they cannot pass
beyond it, nor reach the Western Union Company, or any¬
body olso ; for, if l’reseott and Edison own the patents, when
issued by virtue of the assignment to them by Edison, it is
of no importance to the plaintiffs, and they have no right to
complain of, wliat tliu owners may choose to do with these
patents when they come into their possession.
Boyond that legal titlo is the titlo of the Western Union
Company, ns benolioinrios under the legal title ; and it is the
strongest kind of an equitable titlo— one which would be
converted into a legal titlo by a Court of Equity, whenever
the patent comes into existence, ns a consequence of tho
agreement between tho parties, the nets done, and the pay¬
ments made. That principle is established in tho Wind¬
mill case, decided by Judge Woodruff, and cited to your
Honor from 8th Blnteliford by my learned associate.
These nro the two titles tlmt we stand hero to defend ;
first, the legal titlo of Prescott and Edison, in trust for the
Western Union, which is the specific subject of the prayer
for roller in this bill ; and, secondly, the equilablo titlo
of the Western Union Company, winch doponds upon the
nets to which I shall more particularly refer, and which was
matured on tho 20th day of January, 1875, when the West¬
ern Union Company accepted the oiler made by the parties
with whom they wore in contract; thereby making a bargain
and n snlo complete, needing only the statutory assignment
required by tlio Act of Congress to complete the legal titlo,
which if need bo a Court of Equity would decree.
This controversy arises out of a number of written and
oral contracts, writings, drawings, and pnpcis, .el..t...g to
telegraphy ; and, therefore, it becomes necessary, in caso
your Honor should ever reach that point— which I do no
think you will— to know the moaning of tho terms ol art em¬
ployed, and to understand tho tilings tlioinsolvos; amt a
rapid glance at the history of the art is a necessary prelude
to any discussion of the scientific evidence.
Before electricity had been enslaved by the genius o
man, what was called telegraphic communication was effect-
2
When Dr. Franklin drew from the clouds of Heaven the
electric spark upon the cord of Ids kite, and identified it
with frictional electricity, and when improved frictional
machines wore perfected, it seemed obvious that electricity
might bo made vise of for the purposes of telegraphy; and
more than one hundred years ago Lisngo established an
electric telegraph in Geneva, Switzerland, by the nse o!
frictional electricity. That system was afterwards developed
into what beenmo the basis of the present dial, or printing
wheel, telegraph. Two dials, one at each end of the line,
upon the perimeter of which were marked the letters of the
alphabet, and the numerals, were made to revolve by clock
work synchronously ; and the observers at both ends saw their
wheels revolving and presenting successively a, b, c, d nt an
opening in the dial cover. The sender at one end, when the
letter which ho wished to send appeared to him, closed the
metallic circuit, and transmitted a flash of atmospheric elec¬
tricity, whereupon two suspended pith balls at the other end,
being electrified by the same kind of electricity, diverged,
and that divergence was observed by the receiver, who noted
the letter which then appeared upon his dial. That sys¬
tem was experimented with until it was ascertained that
atmospheric electricity — frictional electricity— static electri¬
city — liad very little power when transmitted over a long
distance ; and that little power was practically uncontroll¬
able; and so frictional electricity was useless for telegraphy,
Then when galvanism was discovered, and the galvanic
battery invented, it nt once was supposed that this now
form of electricity might work a telegraph ; and the
chemical telegraph was invented by Mr. Coxc in Philadel¬
phia in 18 LO, who set up the first chemical telegraph in
this country, and perhaps the first one in the world. Soin-
and that the bubble was the signal, uni it was
At the same time Ooxe also suggested the decomposition of
« -17
u-o-magnetisms. Arugo and Davy simultaneously -one
m r ce ml the otl.e. , J al 1-1 eve el tl t a
niece of o 0 lcl by 1 ' c tl 0 „1.
which a current of galvanism passed, would become
magnetic; and in that same year Arafio uiagacUzel
sowing needles, and other pieces of metal, by these 1 nea
From this fact Ampere deduced the £
nctisin is the circulation of currents of electricity at ii0U
glc to the axis joining the two poles of the magnet
That was a brilliant deduction; but no praeU 1 c t a.
produced from it until 1825, when, ... England I ll c l: » snnpU
electro-magnet was made by Sturgeon, w .10 ’ J- 1
wire into the slinpe of a horseshoe, and wound a
r.,.d it ina helix, through which the galvanic currc
passed , md ho found that the horseshoe wire «
long as the current (lowed. Then at once 1 u a tu 1 «
made with Sturgeon’s magnet to produce the clectio ina,
iictic tele tpl. aid 1 'eat deal of eMe.n.c n v
1 tie 1 t 1 Inal Mth it <-
eulty was that the magnetic power could 1
milted from the battc.y lo. mo. e than f.ft 0 xH lecl
and Sturgeons magnet thciefoic entu i
for the purposes of a telegraph i and so use e was tin
in 1829, Professor Harlow
stration in England, which was accepiu. uy
13
world, that an olcotro-mngnotio telegraph was impossible; ®
which was true in the then state of knowledge. 1
/“Then came Professor Henry, who, in 1830, deduced Hr
' from the hypothesis of Ampere— that magnetism was the i
circulation of electricity at right angles to the lino connecting
the poles of the magnet,— the invention now known as the I-;
compound electro-magnet. In that year he constructed |
an electro-magnet that would sustain 1,000 pounds weight; i
and he answered the demonstration of Harlow, and proved p
that the electro magnetic telegraph was possible. In the |
saino year ho set up an electro-magnetic telegraph at |
Albany, over a lino of a milo aud a hair in length, using I
what is now known ns the " polarized relay,’’ between the
poles of which a magnetic armature vibrated upon a hinge,
ns tho currant of oleotricly was reversed, — the end of the
armature striking a sounder, and transmitting tho intelligence
by sound. This was tho first elcetro-mngnetic telegraph (I
uso tho popular phrase) over made; and it was the first one
possible to bo made, because, until Professor Henry’s elec¬
tro-magnet was invonlcd, it was an impossibility, 'fhis
electro-mngnetic telephone, mndo by Professor Henry in
1830, is the thing in universal uso to-day. It goes by
the erroneous nnmo of tho 11 Morse telegraph ;" and it will .
bo in uso till tho end of time. Tho thing was perfect ns it •
came from tho hand of its author, and never has been im- j
proved from that day to this, ns a sounding telegraph.
But this invention wns in ndvnnco of tho time when it
could bo used. Nothing cnti come into practical existence
in this world until tho environment 1ms grown up to it.
Tho simplest form of tho eleolro-mngnetio telegraph to¬
day would bo perfectly useless among Choctow Indian!.
’Until civilization has mndo the demand ; until business has
grownup; until railroads hnvo been built; until rapid
communication of thought becomes as necessary ns rapid
transmission of physical things, you cannot have the
telegraph practically existing ; because men will not pay
their money for it. The pyramids of Egypt had to be built;
the dome of St. Peter’s had to bo reared ; revolutions had to
'overturn tho old superstitions; and thought had to be
liberated from tho oknins in which it wns held for ages.
leforo any ol those new things ere pos bio; and they .
•one into uso slowly and gradually.
‘ Ts an illustration of this law, and a very sinking m e
,,iv0 you the compound steam engine. In 1813, a Mr
(Vblf in England, invented and patented what now
oml in 1832 one of them came to tho City of Now York,
and has been working, op «£*•*** ^
nt the foot of Jordan. He
never'ronehed the promised land, although he saw it from the
hill top. In 1800, after that thing had boon known to oveiy
ineer' fo a generation, for the first time it was put into a
"‘Th was in regard to Professor Henry’s telegraph ;; and
if your Honor will read Mr. Orton’s letter to £
General, which my learned friends hnvo P' «
in which ho gives a retrospect of the wcnt
find that when Mr. Morse, m 18H,six ceil - ‘ ’ ,l0tic
to Congress for ^ tmiversal ridicule;
telegraph built, ho was mot will Smith, and others,
—
““I,', 1837, Stcinhoil, in Munich, put up °! [
telegraph, and an eleetro-magnet.e lelepl.one, bot . ^ ^
Professor Henry’s invention ; and h ^
eleven miles in length, with eight statio n s o t
covered tho important fact that thoonrth wonld ;’
conductor, thereby saving ono wire °
n forming a circuit.
tops fflion, ill 18-10, Professor Morse, wno nun neon expen- g|j
men'ting on tlio subject ton years, appeared ; and lie added to M
tl )0 telephone of Henry, tlio running slip of paper Hint con- 1|
verted it into a “ telegraph." Tlmt invention did not g|
liavo a very long existoneo. It passed out of use in # W B
years as the witnesses on the stand liavo told ns ; and tie g|
world lias gone back to Professor Henry's telepliono of 1831, gf
which is now used wherover civilisuitioii extends; awl in g|
anotlier generation, when the visitor at Central Park ash ||
what that strip of paper, marked with dots and dashes, tint gg
is held in tho hand of the bronze statue of Professor Mors W
moans, it will have to bo explained by some one who Inti ||
more knowledge than will then bo common. The Morse |g
telegraph has disappeared, practically, from the face of the §
earth ; and the thing that ho invented is no longer used or |j
useful. „ , , . , f«
Then enmu Haiti, in 18-10, developing Coxes chemical | ;
telegraph of 1810; and he made the thing which your
Honor now knows as the “ automatic” telegraph. That came
into existence perfect from the hands of its inventor; per |
feet in respect to the transmitter and tho receiver; perfect |
in respect to its capacity to send an indefinitely great mint' |
ber of words a minute over a short line ; because, as my
learned friend has said to you to day, and as is true, clients ;
cal paper is vastly more sensitive than the electro-magnet,
and by its ttso one can transmit signals with a speedy hear¬
ing such a proportion to that of tho other as the hclipst
i-aeo horse bears to tho mud turtle struggling on tho batiks
of. a rivor to escape capture. .
Tho chemical telegraph, as it caino from tho hauls o
Hain, has nevor been modified or improved. Thcio have
boon inventions for tho purpose of keeping the wire roa
open, over which tho electric current flows, so that. tic
Bi'ttordum^^^tlian twenty yours 1 r° "'ul
m ii,“
igtjsn .v.ri-: e-”
wlion wo undertake to send messages over o
. nces • and, therefore, tho duplex system, as t
Holland encountered no dilVioulties, and wont
md s eecssful operation. In this country, how.
was undertaken to lie used hetwaten ere mid
a line of comparatively short length, t w
1 uclly .eeo st 1 and this lm
ntbtl o “ending end, and there makes ft nls
that instnu nent ought to be —d £
the current sot in notion by tlio opciaior
end 1. order to ..out b/c tl t t t i
ncce«snry to mnko an mvontion, w neb '• 3
in 1872; Wlion tlmt was aeoomplislied, tl.cn
graph could bo used at any distance ovei '
of electricity could bo trn m tte
In 1850, tbo ^.ntdrnpta V"3 ”'vo^
by Kramer, by Bossclm, and by Stalk,
a quadruples, so-called now, > ■_
f t i capacity to so d two me* „
from one end. Whenever you tavo t , '
who make Jieedies in lSnglnn.l will t
head, punch it with a panel
i01. hair through that hole. There is
iml ot my voico who could do unythi
wer0 ||VU ti,u0.s as big ; but to tliei
it ; it is hereditary : it shows the educati
a quality of the tissues of the human b
an educated ancestors.
AVheti tiiere was uo demand for a c
the paucity of businc.ss, it was
member the time when tl.e telegraph
is served by one operator, ami one me
amber the time when the Postmaste
cept the olTerof the telegraph fora vert
! thought its receipts would never pay I
g it. I remember the time when my
itli tho belief Ant it would never come
mse I supposed it would bo disabled
tiling tho wires at the time it was mos
universal impression when telegraph
olopment, first began to bo used iiftli
But these quiidruploxcs wore invon
idison took up tho subject there exist
uplex telegraph just as it exists now-
e it; and the qnadruplox system, just
vstom — he lias added nothing to that.
of the kaleidoscope, protiuemg "o r™
y seldom anything practically valuable develop
n°f18T0 Mr. Edison know of all these old tb
aw of tho duplex, and of the cpindruplex.
controversy hero (although we speak of it at tl
(imUiar way, ns a quadruples) is »ot a qiuu tup
the sense in which a cpindruplex is the subject
y application fora patent. It » n duplex
rietics of duplex which were called here ‘dp
..poscot distinction If M. hd.=on had be
alitor of cpindruplex tolcgrnpby, ho would have
srv dilferont position, as an inventor, befoio
Din the position he now occupies. My learned
, opening, has elevated Mr. Edison to tho love
Ir/ Edison did not feel himself compliment
emnnrison ; but my learned friend thought lie
,t ,f very high praise. If Mr Edison had been t
ither of tho duplex or of tho cpindruplex, lm\
lade a great mechanical achievement, aw M«
very much higltor position than he now o cup
,ot tho inventor ot either; ho is the mien ic
fmations of the well known elements that, had
tombined to produce the sanie ell^ts-dup '
ilex — and his combinations differ horn ot ic ■
minute | it c ill looled at physics j , ■
Hint constitute, in the patents ... control c sy, ,
tinetion, entitling him to great praise and .
a valuable improvement in the art. B« ^
of improvements like Henry s ; uo 0 \
some new principle of action t« devclopwl,,...
of Professor Poll. Tlmt is an instrument which proves in. iui»
two conceptions of modern science— namely, tliu conserva- ||
tion of energy, ami the mobility of the molecules of solid g
matter. In 'that machine the speaker speaks to a plateol
solid iron, ami the voice of the speaker is converted into
electricity. There is no other source of electricity in the
apparatus. The muscular oll'ort that makes the voice of the
speaker is transmuted into electricity ; tho roast licet of
yesterday is electricity to-morrow through the intervention
of tho human muscles mid tho human voice. Thai voico
operating upon the clcctro-umguot of Professor Henry, con¬
nected with a horseshoe-magnet, generates a curre.it o!
electricity, and that current, Mowing over tho line to the
distant station, excites magnetism in n corresponding twig-
net at tho other end, which sets in vibration a plate of iron
similar to that to which the speaker speaks ; and that pinto
speaks to the listener. It speaks with tho tones of the
human voico ; it speaks so that if three people are talking
at one etui, cneli of their voices is distinguished at tho
other, and you hear them all as il'yott stood in their pre¬
sence. This shows that tho molecules of matter com¬
prising tlmt solid plate are, all of them, free and vibrating
under the impulse of the voice; and by their individual vib¬
ration they impress the wonderfully complicated over-tones
of the human voico upon a current of electricity which is
passing, and which is reconverted into voice at tho re¬
mote end. Tlmt is the crowning achievement of the electro-
magnetic telegraph. It was a most lovely night, at the
Grand Exhibition at Philadelphia, when Professor Henry,
the father of the system, and Sir William Thompson, the
greatest living electrician in Europe, met and expert
meuted with that mysterious telephone. Their pleasure
reminded me more limn anything else of the exuberant joy
of childhood, when some beautiful revolution of nature lms
l,oo not been developed to any consu eta > o • >
om Honor bus beard Edison on the slant ft tel U youttmt
the inventions of Tattle, winch wore «'P1|^‘ f t it
.he eloetro-eliomieal system J^tLw the
ti “S I-" ""
parted no real value to tho m.toum ms> ^ - „f flu
when you have known the surround. n ,, B
are impelling lltcm-d you ^ j ol)servor, yo
experience 1ms been able t D , ° It ;s the sum
wiU know Precisely wbat d^wdl - tl,
as it. the physical world v « h « - Known the chn
^SS'llir— imeSe^nuUi^-' is i»cviW',,C’ l,V
TSU ,•»;«
vious education, but with i 't ■ ) ^ wul likely,
observing, practising, 8tul^ „ Umblo results. Mr. H
the future, to prod l««o ^”’°Vnslli„gton, had been inapt i
nngton, who bad como nom system would cortaii
20
supercede the electro-magnetic system. It Ims a very seduc-
tivo presentation, One could show in tins room Bain's
machine sending ton thousand words a minute and recording
them. The witnesses on the stand have told us so. One
could solid tea thousand words n miuuto from here to
Newark; and probably a thousand words a miuuto front
hero to Washington. All that looked very promising. If
a wire with Bain's system can send a thousand words a
minute, how stupid it acorns to use the electro magnetic sys-
oin, which lias not a capacity, generally speaking, of more
than about sixty words a minute ! Without seientiliu know¬
ledge— without enough forecast to take into account all the
elements of the problem, it was very likely that people would
bo induced to invest their money upon that presentation.
■ In my personal experience I have seen a great many
such things. Paine induced capitalists to invest money in
what lie called “ water gas and ho was going to make
an illuminating gas by bunting up tlio North Bivor. llo
had always somo concealed hydro-carbon to catalyse his
hydrogen, but ho did not sliow that to his audience ; they
saw water going in at one end of the machine, and rich
gas coming out at the other. Now, a man named Neeley
hns got a number of peoplo engaged in tlio business of pro¬
ducing perpetual motion. lie shows tho most astonishing
results; but ho conceals from his dupes tho true source
the power, and attributes his effects to a cup of cold water.
So, this eloetro-ehomical systom seduced people by tho pre¬
sentation or the general fact, that (ivo or ten thousand words
a minute can be sent over a wire; and it seemed as
f that ought to bo sufliciont to supersede all other sys-
toins °£ tolcgi.iphy. Bat, tlioy did not take into account
that he message cannot bo sent until, first, a strip or paper
bas boon punched, by a punching machine, with holes to
conospond with tho desired signals, and that it would taken
man ongcr to punch the holes than to send the same message
vi h the ordinary key of the magnetic telegraph. They did not
take into account that, when tho messtmc came out at tho
ot lor end, it had to be translated, and written out by the ope.
a o ; whereas by the eleetro-magnetie telegraph the messige
13 1000lV0(1 “^written outasfastas tho machine speaks it To
mado tho thing slower than Professor Henry's system.
They call it the “ fast system of telegraph)’.” I
and Harrington, knowing nothing of tho science of tho tli
were induced to invest their money in this “fast” telogri
It generally happens, whore men have pursued such pi
toms as that, honestly at first, they presently east abou
see (whoa they find themselves docoivod)how can they on
others. I am often consulted by peoplo who have perpe
motion inventions. Pointing out to them tlio impossibilit
such a thing, tlioy ask: “But, don't you think somctl
could be added to that to make it sell?'’ Beginning \
self deception, they end with an attempt to deceive
world. It is the common eout’sc ; and thousands of s
instances are within everyone’s experience who may eh<
to look into the phenomena. This is another iUustrntiot
the same kind.
On tho other hand is tlio Woslorn Union Company. It
been built up by a wise and sagacious policy, under the n
iigoinent of Mr. Orton— whom your Honor saw upon
stand for four or five days, under tho cross-examinatioi
my learned friend from Boston — sagacious, cool and upri,
lie examined tho automatic system, and made up his in
that it was worthless. A controversy arose between
Orton and the automatic party as to which was the better
loin — -tho automatic or “fast system of telegrapl
us it was called, or the eleetro-magnetie system ; and I
controversy raged up to tho very White House at Wash
ton. It appears in the report of tho Postmaster-Crem
in 1878. On tho one hand, Harrington and licill' u
claiming that they could send an indefinite number
messages in an hour; and, on tho other hand, Mr. Oi
was contending that the eleetro-magnetie system was
faster ; and his letter of 1878 gave statistics to prove
truth of his proposition. As ho said upon the stand,
pciienoc had not changed Ins view of that quest
Thu testimony in this case has demonstrated, more fi
than the oublic has over vet boon aware, what a misery
cripple this nutomatic system is ; and Mr. Harrington em¬
ployed Edison in the liopo Hint lie could euro its infirmities >*
mid they formed a partnership, and set up a shop in Newark.
For what purpose? Mr. Keill'hns told you on the stand: Ini
says, at that time they were in hopes that the Littlo system
would go into universal use; and that this shop
would be needed to supply machines for the whole
country. That was the hope and the expectation under
which that partnership was formed, and under which that
shop was begun.
Later in the day came into the drama Jay Gould.
He is the Mophistophclcs of the play ; ho is, in thu parlance
of the stage, the "Devil;" and the rest of the party are
the tools and pawns, that ho moves about at
pleasure. Jay Gould belongs to a ulnss which has afflicted
the commurity of late years (of whom Jim Fisk ami
himself wore notable examples); who live by the misery
nnd distress of others, and by the destruction of other
peoples property. The great Mantuan Poet had Jay
Gould before him when ho wrote his splendid description
r t lie Harpies creatures whose bloodless chocks show
that they are gnawed with eternal hunger; over hovering
w ere the repast of honest men is spread, to dcZ
what they can, and defile what they leave :
nar|Sl'ot Ilia' -ais ? im”"' "l0"li.b"s "l,8l"lt
Jny Gould is tho Harpy of modorn times.
„ '' len 1,0 onmo illt0 this caso ho was what they call an
I Z k„ ~,,oU(,t0l0°mi,h °l)omtor- but 11 oporntor."
I don t know exaedy what tho moaning of the term “opor-
ntor” is i,n li nS-1 1! ?"”1' !t> 11,0 "lost successful “ opor-
e tv a , ,10’ Wnl! Stroot- 01111 (lustl'°y the most pJop-
tl.fnoo oon l|r .'°m “? "’1'00k 11,0 t'lehest harvost ; like
a id1 on 1, “ t,los,1101° w'10 liold out false lights to Maps,
aud enrich themselves from the wrecks they cans. He
into it P‘0U0US 0,lm'notor 111 ‘ho play when ho comes
ruarv m" li'"'1 m,!“1° a conll'!,ot with Mr. Orton in Fob-
y* 1873‘ For wll« Purpo.se ? There has been an or-
28
voncous impression floating in the minds of counsel in this
case — an impression derived from the retrospective view of
the facts, but not from the prospective view of them as they
appeared when tlmt contract was made. We look back upon
it now, and wo see there has been created a valuable thing ;
and we supposo that the parties who entered into that,
original contract had a knowledge that the valuable thing
would be produced. May it please your Honor, the
original contract was, as if one were employed to dig pota¬
toes in the field and it hud ended in striking a gold mine with
the spade. Tho contract was made, ns it wore, to dig potatoes;
it has turned out to yield gold. 'The contract was made at
tho solicitation of Mr. Kdison, and not of the Western Union
Telegraph Company. Mr. Edison applied to the Western
Union Company for wlmt? For employment as an inventor,
lie ubs running a shop at Newark — manufacturing elec¬
trical and other apparatus in company with Murray.
He had this kaleidoscope inventive power, and he
thought lie could use it, and get some money — a very laud¬
able purpose — and ho applied to Mr. Orton for an opportunity.
Now, lot Edison toll his story. I asked him tho question,
and he told your Honor that none of thoso duplex combina¬
tions that ho had at that- time was of any value whatever, as
a practical machine, compared with the then existingduplex
in use by the Western Union Telegraph Company. Their
value, to use his expressive term, “ was of a negative
character"— that is to say, if ho could turn his kaleido¬
scope aud product! now combinations, and have them
patented, no ouo else could patent tho same things ; and,
when the Western Union Company owned the patents, it
would have tho bonclit of their protection, in addition to tho
patent for the Stearns' duplex, which at that time was, and
to-day is, tho controlling patent in duplex telegraphy. He
says in one of his letters ho would make duplex a “ pat¬
ent intricacy, and that intricacy owned by the Western
Union Telegraph Company;” and he writes: “If I come
across another duplex I will coniine that in the Patent
Office for the benefit of tho Western Union Telegraph Coni,
puny." That was the contract. None of the parties sup¬
posed anything valuable would come out of it as an im-
between 1872 and 1878. I slmll give your He
references to tlicro statements. They pressed
behind that date, and bo utterly refused. lie sa
1872 and 1878, but not earlier than the i
1872. But, may it please your Honor, wo
land marks in this ease fixed by stakes th
moveable, and which no amount of nrgumc
suasion can ailed. Mr. Edison gave to Mr.
the 16th Feb., 1878, drawings of wlml be laid lb
of on this subject, and the inventions bo then ba
only important invention in controversy boro (I u
00 was not there ; but on the contrary, there is i
sketches in which an attempt was uiado to show
sending two messages from one end, and Edison
it: “ 4 ply— why not?" When 1 asked him tin
“ fs that the principle of ‘Case 00?”' bo said, “N
man pretends that it is operative. When lie can
1878, ho knewthnta cpmdruplex was in existence,
in 1870 of the Bosschn quadruples, llo had trie
make a cptadruplcx, ami ho has given us tho skct<
it is not operative, and is not on the same priuci
one ho afterwards invented ; so that in answor t
meat that ho lmd made this invention in 1870 Kdi
that ho did not do it until 1872, at any rale. ’ H
however, show that he did not have it even in
1878; for ho would .... .u„.. i. .... . , ,
necmise ins memory failed m respect to (Tin ,>xiu,t
time when it ncenrreil, it being n mutler of mi sort of
consequence, mill having occurred three year* liefmu
he went ilium the stand to testify anil (lx the date.
Hut it it linil oeenrreil, wlmt (lien f The reuonieil con¬
tract of .1871 hits no possilile eonneelion with the inrun-
lions in issue here. They are not luitoniatie, ami are not
applicable toaiiloinatie.
So much for notices. 1 think I incur no risk in saving, ns I
snid in the opening of my remarks it] ton that topic, that tiio
proof was no stronger tlum the attempt to prove the meaning
ol tlie word “fast;" and I end ns I began, by saying, there¬
fore, tlmt every one of the material allegations of that coin-
Plaint, is cither not attempted to bo proved at all, or has boon
disproved out of the mouths of their own witnesses. Anil as
my learned associate said, when a party goes into a court of
equity, and swears to something, lie ought to tell the truth
there. There may ho other places — the Custom House anil
several other places— whore a man may bo justified in swear¬
ing to what is false ; butnceording to my friend's refined dis¬
tinction, inn court of equity ho ought to tell the truth.
What a monstrous thing it is that, upon the footing of this
hill of complaint, containing these half dozen essential, or at'
least highly important allegations, no one of which is true, and
the greater part of which wero necessarily known to he false
by him who swore to them — what an outrage it is, that our
rights have been hold in abeyance now these two years,
by an injunction of this court, granted, as it must have been
granted upon the assumption of tho truth of those allega¬
tions, which upon their examination turn out to he utterly
groundless anil false. Sir, the maxim, fulsua in t inn, fntm
m omnibus, is not confined to nisiprius, ns Judge Cowon re¬
marked in an opinion delivered by him in the ease of the
l’eopie vs. Davis, in this State; and certainly it ought to
have as broad an application in a court of equity ns it could
possibly he made to have at nisi mins
dean liilnds and a pure heart. They were solicited
inventor to make the contracts they did make. So
good lias come out of it— good for both parties,
parties concerned ; hut they were not seeking for I
tracts, as they might lawfully have sought, if they
they were solicited by Kilison himself.
Now let us look nt tho other side, in 1874, al
ipimlriiplijx laid been sot in operation to Huston, to
to Chicago, and had begun to attract public attention
value had begun to ho recognized, Jay Gould nppou
the scene, llis business is, as I Imvo already desci
your Honor, that of a stock operator. Tho capita
Western Union is about $34,000,000, of which $3
oiie-tenth of one per cent.; mid Jay Gould, or any ijthc
lor, could .'dionl to pay $80,000 every day in the wool-
doubt u pon tho value of thatstook tunny appreciable
if your Honor will look nt tho stock sales that are pi
ovory (lay, you will limi tlmt about ouo third, oftent
the whole capital stock of tho Western Union Con
sold ill one day— t mean sold in tho sense that tho a
buys neither wants it iior takes it, and tho man w
doesn’t own it ; but sold in the Wall street sense, cv
in the week. That is, it is gambled for by operator
extent of at least one third of the entire capital mn
in the week.. Therefore, nny operator tlmt can east i
upon the value of tlmt stock, by impeaching the title
tt represents, or by nny other of those performance
tain very happy to say u gmnd jury of tho count
recently lias brought within tho purview of criminal I
made tho subject of indictment, can well afford
$30,000 every day in the week. One per cent, depn
in the stock will pay a mini for the expenditure of I
u ho lias contracts to sell one tonili of tho capital s
l,10 “lnl,l,Ily at tho higher price. Tlmt was Jay
superintendent, and one A. Ji. WpWipr, manner m 01
mv, at Newark, at Mr. Edison’s simp, with Jay Gould;
and for what purpose V For the purpose of indue-
ing that young man to violate his contracts with J’reseott,
and the ’Western Union Company, upon which he hud boon
paid $5,000; under which the Western Union Company hud
spent many 'thousands of dollars in developing these invon.
lions; and to transfer the title to Jay Gould, so that lie
might say that the Western Union Company did not own
tins valuable quadruples, about which so much was being
said in the newspapers, and that it belonged to him. Then,
t few days afterwards, this same Thomas T. Eckert, tukiii"
with him Edison, appeared in the sumptuous parlors of'thb
, operator " in Fifth avenue, whore General Eckert “as-
iistcd m negotiating the contract," whereby Edison tried to
tonvey to Jay Gonld, that which he had already couveved
o I rescott, by his deed of the 19th of August, and
vluch ho had already sold by bis contract, in part exo-
luted, to the Western Union Company. Let us content plate
us picture. In Gould’s palatial residence is this youm' me-
ihnmc, having the potentiality, by the stroke of his i on, to east
loubt upon the value of this property in the Western Union
company s hands, and thereby depress its stock. On one side
, Jlim f 1 mih 1,10 superintendent of bis own company, under
,m 1,0 was a subordinate, urging him on ■ and on the
ther, whispering in his oar, the Mophistophclcs of this drama,
s lus master m the Garden of Eden whispered in the ear of
main !° ‘ !"S, 0U,t bofoi'° llim -^«0,000 in money if ho
I do the deed. J’lmt is the picture they have presented
) you hero, sir Edison, their own witness, wont upon tho
nd and drewit; and he swore that he then told Ja • Gould
'i he showed him his receipt for the money, mul ex-
. T f to.'llm n!i bis relations with the Western Union And
"I have got the means of shaking the title of tl
to this valuable improvement” — the greed c
combined to carry him on, notwithstanding tl
look of this young man caught in his toils, an
relent. And the deed was done, sir, by the sc
Thomas T. Eckert, our superintendent— trust,
spooled—1 with tho keys in his hands, and set to
which he opened to the burglar.
How strange it is that that crime whiel
others meets with the universal excoratio
kind— which is followed by infamy from tin
committed until the grave closes over tho n
of tho criminal, is ever committed. How
tho frightful examples of those who have
its commission will not vet deter men frot
Treachery is tho only crime against which we
fence. It is our friend, our brother, our trus
ion, to whom our heart is open, in whose |
armor is east down, and the shield thrown nsi,
it ; and when he st.-dis to the heart, every otbei
that it may bo his fate to morrow, because 1
trusted friend who is in a like situation ; and
kind have united in condemning as cxecrab
other crimes, that crime of treachery. Whe
type of this Thomas T. Eckert, who dipped his
dish with the beloved Master, and then lit
throw down the thirty pieces of silver befot
Priest and went out and hanged himself, it mig
thought that that example would have deterro,
for all time from the commission of a sirnil
'I his sort of treachery shows what a baleful p
cised in this country, arising from the immora
% Gould is a disappointment to mo. I never laid llio
nsuro of seeing him. 1 have seen liis pioturo linin' in
i steamer Provideneo; himself I linvo never seen. But
friends and admirers for years liavo boon lilting the
with their clamor that ho is the most accomplished
all the tricksters that l.avo ever appeared on this
=o I and they have mndo the eommnnity believe
md I believed it. It wns said by his partisans in those
•s when ho and Jim Kislc were depredating upon this town,
an any specially atrocious piece of villainy was done
h, that is the brain of our friend Gould ; Jim 1'isk
>"ly a clumsy instrument in his hands to execute
oir, if tho ghost of Jim h'isk could como out of its
ton house and bo present, it would gibber and laugh at
Goulds stupidity in this clumsy trick. Me himself
"I"® 1,10 acil01' in it; he himself did tho deed, and had the
losses eotno upon tho stand and toll it on him. Whv,
Jim J, ,sk never would have done a thing like that. I io
dd liavo had a third party there, from whom he would
o taken tho title, an innocent holder without notice,
y, sir, Jay Gould, ir ho would only study his great
mplar I agm, m Oliver Twist, whore just sucii n thing as
was done, would bo taught a great deal better lesson
1 . " ,0,J .|,nS"! sot out to rob a house in Ungland,
go lumscll to seduce tho servants to open the
rs ho sent ioby Crnckitt to do that ;-nnd for tho honor
Human nature those servants could not bo seduced,
T * woro l)otter than Thomas T. Eokcrt-but b’airin
anil somebody eommitted tbo forgery
tho custodian of tho record on tho sta
done with his knowledge or consent,
document before your Honor, and you !
word “or" was not there on tho 2.r>th
Your Honor has seen tho original record,
ot it here. Tho word “ or ” was written
(loring donkey with a coarse pen, and dil
it is, sir, written in by a clumsy forger, am
Why, sir, the purpose came out, who
exemplified copy of that thing, with th
was offered in evidence here in place of tl
ruled out, however, and tbo original hr
Now, allow mo to say to inv
that I have not in my heart the remotes
was any part or parcel of that transa
capable of being a part or parcel of il
would boot cutting off bis right hand fo
this audience ; but lie stands here as tin
clients whose capacity for that sort of
1 tilled. I am only showing your lion
and where tho motive was, and who w
awl that is just how it happened, as
Court That forgery was douo by sotn
pose of producing tho effect that that
posed to be capable of producing ; bc<
stand the law, if there be constructive n
111! not tiny it was. And it Intel another dillicultv if one-
ive— its incnjiiusity to bo nsod otherwise tlnin ns a
itraplox. When the inventions were developed further,
I Mr. Edison invented wlmt ims been called in this rn«o
"bug-trap "-an invention for the purpose of neutral.
'8 kmk nnd recoil of the arniaturo when tile
'.‘■out. “ 1'°.V0l'a'?d~it W!ls llis l),u'l]osc to include the
ire invention in the now patent, for tho developed
I perfected thing; and, therefore, lie put into
bauds of Mr. Sorrell- who was tho agent of Prescott
Edison jointly, nnd not of either— powers of attorney to
lulmwor control those ponding cases — “Case II " is the
1’ one I euro to speak of— for tho purpose of using those
Mentions in aid of the developed ones that followed
n; and the application in "Case U " remained in the
10 neglected, because it was intended to be superceded,
on this litigation broke out in tho Patent Ollico, how-
r, and tho quadruples patent was about to bo issued to
1 rescott and Mr. Edison, and not to the A. & P.
ipany ; and whoa they wore availing themselves of the
it learning, nnd greater ingenuity, of tho counsel from
snehusetts, before tho Secretary of the Interior, to in-
J Inin, who had no more jurisdiction over it than tho
m the moon, to reverse the action of tho Commissioner
atonts, and order tho issue of these patents to llarrim'-
or Jay Gould (for that is what tho proceeding was),
When my learned friend made his very forcible but
-^(KiS^r- tiie i,,to''io,'"',is in
ally it was described for tho purpose of sending f
“opposite directions:" they added tho words, “from
Mine direction." They then directed— “ Take outline of tl
two relays nnd use only one.” Why, your Honor, tl
two relays were the only things in “Case II" that v
chnrnetorisde. The two in combination were tho subjeu
tho proposed patent, as a means of remedying tiie dc
which wo ail know and understand. “ Take one out,"
they; that is to say, Wipe out “ Case 11 " entirely, and i
stituto " I)!)." Now, your Honor knows there is a princ
of tho patent law, that at the day when a pa
is issued, the inventor is supposed to lie possessed of all
existing knowledge; and if any part of that knowledge wi
his invention, he is entitled to use it for that purpose, sub
of course to the rights of prior patentees, if there are :
Under that principle, they interpolated into "Case
before it issued, the substance of the quadruples- :q
entioa which was in uso that day ; but then the trick
to get 11 Case II" out of the Patent Olliee. All action on tl
applications had boon suspended by the order of tiie O'
missionor. Sorrell was the attorney, with the power in
hands. He was tho attorney of Prescott and of I'Mi;
and wus a man of honor, incapable of any ffflutl
would linve done nothing at tho instigation of cither of tl
parties, adverse to the rights of tho other; and yet his
t'oritynmstbogot. How did they do it? .Josiah C. HeilV
cqnnl to tiie emergency. On Saturdays Mr. Sorrell had
habit of not being in ids olliee. On Saturday Josiah C. I
went to his olliee, and induced his clerk to solid a dcstni
“anonymous" before. And that is bow tboydid it, as it
lms l)oon proved to your Honor; and the telegram itself has
been jiroducod under wliieli that deed was done.
Unfortunately in telegraphy the handwriting is not iraii.s-
milled; and it is, therefore, a very convenient vehicle for
forgery. 'Die receiver of the despatch does not know the
hand that wrote the original, and assumes it to ho from him
whoso name is signed to it, and nets accordingly; and not
only in this case, but in numerous cases, names have been
forged in that way, and groat dnmago done in innocent
parties whoso rights have been affected by such telem-anw.
That was the next fraud perpetrated by this partv : and
Josinli C. Belli was the proper instrument for performing it.
Now, tlieso are the plaintiffs, in this sniictuarv of plain
dealing and honesty, in this forum of conscience, whore
stripped of all the forms mid technicalities of law, lioncstyand
fair dealing alone arc respected, and where the conscience
'? alT°nl«l to, and not the more letter of the slatuto—
these are the parties, with their hands black with tlieso
irin.cs, who come hero and appeal to the Chancellor to
site thorn equitable relief, against the legal title of which
roseott is now possessed under the forms of law 1 1
, . f"s now examine lor a moment the foundation of the
ilmntiffs equity. The contract of tho Istof October, 1870, is
io i most important, if not tho solo contract, under which any
ilaims can ho made in view of the state of the record to
'hid, 1 have already referred. That contract undertakes
o make, and did make at the time of it, a partnership, in
v cl. Ldison espeeudly botintl himself to devote all his time,
! ‘ " 1,18 olI°r,s' 10 business he had contracted to do-
■a me y, manufacturing machinery in Newark, and invent,
g whatever might be useful for the purposes of that bush
•wsed t"’ IC" !'• °rt0" ,not-Mr' Mton in 1873 he had
. .sod out from that association, had formed n now part-
lershinwhich inditm,,.,, „i.„ . . ... I .
drygoods business, and Imd opened a shop at 5(
for the purpose of soiling drygoods ; and one o
ners had taken down his sign and gone away, c
a now partnership with another at 1,700 Br<
opened a drygoods shop there, and his former
become his customer, paying him tho profits of I
ness and buying his drygoods. Under these ci
any mail who knows these facts, knows tl
longer are partners ; and that, so far as any t
based' upon the theory of partnership, ho at lea
bo affected by such claim by reason of any noi
world has of the supposed existence of such a
That was the situation of tlieso parties when
commenced to deal with Mr. Edison in 1873, ii
of February.
Then, sir, tho inventions, according to tli
that partnership— tho inventions that Edison i
outside of tlioso that were suggested by t!
they were carrying on— those inventions wen
to tho partnership. How ? Why, Edison was
for them, liy the partnership, such a sum as I
might agree upon, or such a sum as arbitrators
lherc it is in writing in that contract of partners!
partnership hud ceased to exist: it had no pi
linn inglon and his associates had taken unto tl
number of other spirits. They had swept Ed
that place. They had cleaned and garnished it ; i
that came in perhaps might bo found described
book. But, at any rate, Mr. Edison was not tin
out of it, and all tlieso other parties were earryir
business connected with automatic telegraphy,
tntion under which that contract of 1870, was
testified to by Mr. Beiff, who says that at tin
it was expected that automatic telegraphy woi
• > v J-uwu,li ,mu ocen *ct Joo.se upon
the community, when lie came to Mr. Orton in 1873.
Then, sir, this contract of partnership was not known to
the Western Union Company. They say to ns that it on-lit
to have boon known-anil Hint was the argument of mvln-
gonious friend on my loft— beennso the contract of 1871 on
record, should have put us to inquire about it. ])ut aside
from such an argument ns that, thoro is no attempt in evidence
to show that the contract of partnership was ever known or
suggested to, or heard of by, the Western Union Company or
by Air. Prescott ; except so far as the fact 1 already have com-
mented upon, when licit! says he slated to Mr. Orton, “ Har¬
rington owns or controls Edison’s invention.” Hut lie made
no allusion to any contracts, and specified none. Tint was
the situation when Mr. Orton made his contract witli Edson •
<md it so continued until 1875, after that contract had
produced its runs, and Jay Gould had swooped down to
seme and defile them.
Now, sir, ono remark I have to mnko about that contract
which I tlnnk covers it all, and answers the in-e„io„s
suggestion of my learned frionds, tho complication of which
tras so intricate that it took me some time to see ,hc point.
My fi mud said m substance: Tho law either does, or docs
no, inquire an assignment of a iiatont to bo recorded;
mid tins contract of 1870, must come under one or the other
of those conditions. If it is of the kind that tho law docs
ndoiT1'! ‘° ,'C0°!'d0t1’ tl,on « m“" wl.o asserts title
. ’ 8 "ot ,olllu' t0 givo notice of his titio ; and
no f °n 10 0W".' I'10 thi"S “voimntcd to him, notwithstand-
®, bona fide assignment to another; and ho
of contr: 8lnif ^ hoonuso tho law docs not require that kind
L. ' , to boroof The chestnut horse, and the
l V giV0 t0 8011001 various
'Oiieri rtl 8!- PU,ZZ eS °f t,,,lt within .lie
’ e desei iption of this species of gymnastics I have
answer to make which I take to be conclusive. The
Patent Office, and a subsequent bonti file purchase!
had bought that invention from its inventor, Mr
Harrington would have had no titio by virtue o
that paper. .-1 multo fortiori lias lie no title lo
virtue of that paper, which doos not describe airy' in
vontion at all; which was withheld from record; whio!
was not specific enough under the statute to go upoi
record ; and which was a secret agreement between tin
parties who mndo it
That, may it pleaso your Honor, is tho contract of 1870—
not of record — of which wo had no notice ; and tho substan¬
tial and material conditions of which woro terminated, in so
far its tho world could have knowledge, by the practical
dissolution of tho partnership. And moreover, the settled
law is, that whatever might hnvo been invented by Edison,
after tho date of that contract, was not in its nature the
subject matter of any present assignment ; and, therefore, a
covenant in respect to such future inventions, could not
have imparled to that contract the quality of rccordabil-
ity, even though it were recorded— and without lawful
record no title can stand against a burnt file purchaser
of tho subject-matter afterwards,
That brings us to tho contract of 1871. Upon tho face
of that contract, if it may bo supposed to relate to
the contract of 1870, it is a substitute for and super¬
sedes it. It docs not relate to that contract m nomine.
It recites llint tho parties to it, Harrington and Edison,
lmd made a certain contract; and it gives the terms
of that contract. Tlioso terms are not tho terms of the con¬
tract of 1870; they arc very different raid very limited in
their nature. It recites that Edison had agreed witli Har¬
rington to invent, and perfect inventions, for tho purpose of
t-arry ...j- mto practical use “ tho hittlo or other sy tom of
automatic or fist system of telegraphy.” No such mutter as
that was in the contract of 1870. Hut, viewed by tho light
of tho evidence, it is undoubtedly true that Uarrington’s
contract. If that ho .so, it is argued that we oimht to |Z
known something about the contract of 1870 1, vivas,,., „r
otreumstnneo that the contract of 1871 was of record ha
2'< °no2 ofi, 1 n"S"'°'',tlmt •? l)aP01' (oven suppose that ie
»"l not.ee of it, or wore bound to take notice of in which
lecitcs a contract of former (Into, and gives the terms t
conditions of that eontraei, not truly, l»t own”,!,” v d o
not put any party upon inquiry to find some other contnr't
than that which is there recited. That which is recited'
,‘S0 1871 lms no bon,'i"='or n 1 0 , ;
It might [bo true that the contract of i.jn Ta
££ 'JS 0flUiliCS ^ ^'4
n uspeot to whatever inventions Edison might make’
. -"I"
r'rr? .
; oZrz“T;r' ?- -
ought than that’,] J “ 'St°' ' 18 !»"1 no other
«j° applicable to qnadntZlleSZ^^’1^
Now, may it please your Honor, there is one i
the contract of 1870, which is an answer to the win
argument, which aims to include magnetic telegrapl
the contract of 187 1 : that clause provides that Kdisoi
mako any inventions that should “ militate against a
telegraphy.” The argument addressed to this com
is, that there could bo no such thing, practically, as a
lion that could militate against automatic lelegrttj:
entiso all possible inventions in telegraphy arc, unde
conditions and circumstances, capable of use in eo
with, mid therefore in some senso are applicable
malic telegraphy ; and, therefore, every invention
mndo in any kind of telegraphy comes within the d
of that contract, and nothing can “militate agaii
matio telegraphy.”
Wlmt did they mean then in that contract by “m
telegraphy?" What did they mean by “auto.;
fast" telegraphy? Tlicv meant a m/stan ; and tha
is the chemical system. ‘ That system is practi-cd
use of a great many things that arc cot . on to all
of telegraphy : it uses poles, wires, insulators, mu
atvl methods of uniting ends of wires — all manner u
that are common to all systems, but which arc not
toristic of any system, and could not be said to ci
any part of any system j because tlieso systems of tel
aro known by the distinctive characteristic featr
qualities of the systems themselves, and not by the i
in which every system lakes a common share wit!
other, respecting certain particulars and details,
cording to the views of my friends on the other sidi
over they can show that anything is capable of bci
tlio copper gives its conductivity, which is liiglior tlmn that of
steel ; so that u wire of n given size of this composition has
it higher conductivity tlmn it wire made by the old method.
That is advantageous alike to automatic telegraphs, au I to
every other kind of telegraphs; because by that means they
can dispense with repeaters, and extend linos over greater
distances. But according to the argument of my learned
friend on the other side, if Mr. Edison had been the in¬
ventor of a compound wiro, capnblo of all sorts of use, or
of an insulator, or of a now kind of telegraph pole, Har¬
rington would exclusively own it uudor the contract of 1871.
Can there bo any question that the words— “ applic¬
able to automatic telegraphy," if thoy tiro in that contract,
must lmvo some relation to that systom, as distinguished
from that wliiolt was common to all systems whatever, and
which was in no may characteristic of any ono system 7
That contract of 1871, however, went upon the record; and'
it has boon told to your Honor, by my learned friends on
the other side, that the Patent Ollico would record a news¬
paper at that time, or anything else sent there and paid for.
The question then arises: "What is the effect of such a
record on his deed of 1871? Had wo constructive
notice of it?” Now, may it please your Honor, the
law of the United States is, that there is nothing re¬
cordable except that which is assignable. That which
is assignable is defined by the statute. It is oithor a
patent, or an invention, in esse, capnblo of being patented.
That is the limit of tho iaw of nssignnbility ; and, nothing
beyond tlmt, is assignable. A covenant that an in-
\mntoi will assign what ho may invent is not recordable.
, ,n"y ,l please your Honor, those defendants, when
they dealt with Edison, knew that tho inventions about
winch thoy dealt were created then and there; they knew
the day and hour of their birth ; they knew that they
could not bo the subject of any recorded assignment, which
inasmuch as such a thing of record is not, in its nature, re
cordnblo. That is the whole of that proposition.
But if it were recordable — granting all that may In
claimed for it— then the constructive notice reached only si
far as tho record itself wont, and no farther. That rccon
itself (until tho forgery was committed) gave no notice o
anything, but exactly the terms that were in it. Bu
my learned friend says that it did not make gooi
sense, if read in those terms. Not only did it tank
sense, but I took tho trouble to prove, by Mr. Edi
son on tho stand, a state of file's which shows that it hue
very good sense, ami very good applicability. Mr. Edisoi
was tho inventor, at that time, of “ mechanical or copyinj
printers” — as tho term is, in that deed of 1871. What wen
those “mechanical or copying printers?" Mr. Edison toh
us what they were. They were what arc now common!;
known ns " typo-writers ; " of ono of which lie was an in
venter, and which lie applied to tho purpose of llclpin;
that automatic cripple along, by running the paper th:i
comes out from the automatic machine across the front id il
with the expectation that the person who played the key
of the type-writer could translate that slip, and write on
that message in typographical characters, by tho use of th
mechanical or copying printer. He took a patent for thn
thing, and it is one of tho exhibits in this ease. That thing
ho tolls us, was applicable to general use ; it could be usci
ill offices, as it is used to-day, for tho purpose of writing o
copying papers. But his contract had relation to automati
telegraphy ; it had no relation to anything else. Nothing wa
more natural, or more proper, tlmn that tho parties, in deal
'tig with this invention, should segregate so much of its us
as belonged to the automatic telegraph, and reserve that ti
the parties with whom the contract was running, leaving t-
Mr. Edison the right to use it for other purposes.
My learned friends have attempted to give some force t
'> u» "incn no received it sum of money. My
il says, “That proves the construction of the con- \
between thu parties." I naked the question, “ \vM
an imtomntie tolegmph ?" 'J'lto witness said it was’
that tlic “Domestic Telegraph " is a kind of auto'
i telegraph. If tlmt contract of 1871 were in existence '
ion the parties, any inventions made in antnmni;..
aphy canto under it. They also cited some other eases
etro-magnotie inventions tlmt Edison made and assigned
irrington. I brought out from Mr. Ilcifi' the history
oso eases, and showed the reason of it. In the
patent, which bolongs to the Western Union Tele’
Company, there was patented the retractile sprint] of the
try electro-magnet, whereby the armature is drawn back
ieh retractile spring is made adjustable sq as to exactly
co the foreo of tho magnetism according to the exig- \
af tho case. That had become tho subject of the Page
t, and the question was whether this opposition coin-
eonld avoid tho use of the retractile adjustable spring
Pago patent. Thereupon Edison was appealed to, anil
d that ho could invent things that could avoid it,' and
jot him to make those inventions. Tlmt is tho state
i fact It was a special ease. Hu was specially cm-
I to do a certain thing, and lie did it. The testimony
that he was paid’ in tho partnership of “ Edison &
y for the inventions lie mndo for those people. When
jo experiments ho himsolf got tho benefit of it, because
Ins own service, but when lie mniiufaetured things the
‘■ship got the bonelit of that.
"T w.110 nmkes inventions by tho bushel, and nets
Patent Office : the value of all tho patents issued is not so
great as the cost of procuring them all. And, taking the
problem of making kaloidoscopio combinations of old
elements, and getting somebody elso to pay the patent
fees — the inventor makes a good bargain if lie is paid for
the trouble and time occupied in making the combinations,
nnd owns one-third of tho patents. That is all there is of
those cases. Tlioy provo nothing; or, if they provo any.
thing, it is that 'tlieso parties woro making special eon-
tracts at that time in respect to Edison’s inventions ; tlioy
do not provo that the contract itself lias any oilier scope
than the words of it of themselves give it, and which tho
law will impose upon it
Then my friends shifted the ground on which their enso
originally stood, which was substantially that “fast tolo-
grapliy " meant qundruplox nnd duplox. I shall not stop
to comment on that, because tho fact is proved all one way ;
and, moreover, it is a caso that needs no proof, beenuso tho
contract lias no latent ambiguity in it, that can justify tho
Court in calling for evidence. Tho Court can properly call
for evidence ns to the meaning of tho word 11 automatic ;
but the term “ automatic or fast system of telegraphy in
that contract, develops no latent ambiguity, and, therefore,
cannot bo helped by extrinsic proof. I say tlioy have
changed the ground on which thu complaint was mndo ; and
they now go upon tho theory of tho applicability of tlieso
inventions of magnetic duplex to automatic telegraphy. As
[ have already said, before they reach that point, they must
have forged tho record in Washington. We stand upon lie
record as it was up to January, 1875. Standing there, it is
imilio tlmt lilt title- good liv bringing in . . .
collateral support to it, after lio 1ms committed tlio fi-suid.
No court of equity permits tlmt to bo (lone; where the
trnu suction is contaminated with IVaud from the beginning,
and where the attempt of the party, who has the linmhilent
title, is to convert it into a good one by supporting it with
801,10 other title. If the second title is good in law, so bo it
—it will stand alone : if not good in law by itself, it shall not
validate a fraudulent title in a court of equity. Tlmt is
wlmt Jay Gould attempted to do, when ho paid Harrington
the insignificant consideration of $5,000. '
Your Honor remembers air. ltuitPs gymnastics on tlmt
subject. Thu plaintiff had proved, by the book-keeper of
Jay Gould, tlmt that $0,000 was paid for tliu q uadi uplex and
'or nothing else. Having proved tlmt, then Josinh G.Kcill'
itteinptod to disprovo it, by saying that Harrington Inhl
dm another story about it; ami his general impression was
lint it was a kind of advance by Gould to Harrington for his
lersonul expenses— a little pocket money ; that Harrington
ras dealing with Jay Gould about other things, and Jay
jould saw he was in need of u littlo cash, as he was going
iwny somewhere, and sut down and drew him a uhock for
15,000, as a small accommodation— a little gratuity to him
,, contract with tins an urn. , , - • ,- „nd
... ....r... 1 What, can bo fairer or better than that?
It is impossible for the wit of man to oonojjw
fairer than that. I submit to your ITonoi, \ i ^ t]u
tlmt there has not been a word said bj any ■ • ^ h
stand, to impeneh the fairness, the 1|0'1“^’ ^ ,|)n Oom
fulness of Jlr. Orton, acting for the Vc&te I
pony, and of MR Prescott acting tor nmself '
any part ot tins t, ansa, turn Mi Oito '"‘“I
oeonsiou to'deal w ith th J eompauy, sta, d ,g m
tilde where the more valuable tlio ^ ^lmt h
• i worth in the judgment of arbitrators,
rt.. i-i . fi.nti iiMuii. the Dcrsoiis who nine i
On the other hand, the ^raoimvho h iwii apt-rml h or
for tlio plaintiff have ntasudj sunlt > js clmmctc
The
C^crort*
■ OF THE CITY OF NEW YORK.
ATLANTIC and PACIFIC TELEGRAPH
COMPANY,
against
.
GEORGE B. PRESCOTT, and The WESTERN
UNION TELEGRAPH COMPANY.
C3^#»ISP»S
SANFOllD, J.
New YoiiK. Junk ttnu, 1878.
/
;llESJ. fnm, U»» JO” 1'B.STrn, 71 SUttO* t
-
$upei4o^ (
^ourt
()!•’ 'I'll 10 CITY OF MOW
YoliK.
n: Ati. antic * . . .
1
i
ut/uinxt
Opinion.
coijou li. J’khsciitt anil Thki
Ju.M 1*.\ N V. j
■V.l Xf/jff/J;
mcdaxiiof. u Jims *
S'Dl'TIIKH.
Alfi/x
. II. H. liA’iiiiPiii:,
1. F. itt-TI.KH,
IvKKiTT I’. Wiiki.j.ki:,
.Kli.N A l!l> .MVKIIS,
/"/' I'loinlif.
Vvi.I.YS III. IM IKS,
!. W. H r.-sin.i..
pun non. i.owHKY. son io
N A' STO.MO.
Mh/'xfor Ihf ilrhol,
Wesh-ru Union Tthi/mfil, I oUrptnii/,
H. W. II FXTI \UT(
feiapiis. biifh ,ij, plications were tinted ami vcri-
,ie,1> AuguHl lOtli, 187-1, iiml won. respective! v ili'siii-
nnluil by tlio iiiimbi'i'.s, |1.| |0 ion inc-ln.-sivu on,,.,'
applications of like uhiuaclai- were- alioi-tlv af(,.i-
wards entered by him in Min smite otlice, anil were
designated by tile mini burn, 111, mummy. prim,
, 10 1 ’"K of 811 ell npplicnlinns, mill on MioSmli of
mlTlSW Wl"? ,,gnie'"el" "rri,i|W. 'bill'd August
'I J ; between Hie said Edison mill Hie ,li-
femlniit, George B. Prescott, wns sent totl.ePahni
Oiliee^ and wns there duly re, milled in Liber K. 18,
'""Sfws °r Iintents, nr. page (12. This instru-
f ' ''e,:ltlnS I'm invention by Edison of Hie
'mS ‘ini' . . . . .
ov(i^ interest,
i, el ». I, '’"V’1 1". mid Iimlei', mul connec-
vemioite ttili,1,il"<1 "" ,h« n foremen tiunod in-
mtioiis, mid letters patent on Hu* smnc when
m i ssion or’ 'j.11 (La 1 1 " 1 ' 1 ‘ l i,,!( 1 mul renuestml I be C'L-
°r 1 nb'iils to issue s.irb letters put,.,. I
Gooi'm. I r.1, b 10 "1H| °\ b I II
^P Ue, t; 5(0n ,0 tl,u Commissioner
l-mvbm l2 f ' in’,bu,n'iM» <1'"° •l«"‘i"iry 25, 1875,
Bdisim «na iS}flu!1?r;,r.!!n.t "*
let lev, of the snine diiti', from Edison w u .
sinner, suiting Unit his nrniiigemeiil «ilh ^;>^»
. was mmle “under mi erroneous lnll"‘
v, ', .nesting I lie issue of le.levs pa on ”
.... «i iid hi nmol T in rtit«i»wlunc« with the <ouu.
between them relerreil to 1"
'......I'muest before 'ho ron.n.^.ie. upmUlmc.^^
inivdemsH.n «««' •'IS . ’ , „r Edison mid Prescott.
This
uppUention*, llio.iffl. ’^^ "^"HV’eoi.,! .id Hint
H, is no, me, led nml ..mb «' » ' > ' tontllbl(.
tin*, improvements tbiMom " ^ .t, ,ltU iss,.e to
m,d that patents UjeroJ" ^ ^ nf Klltfloa, but
Edison nml Proseott, ns v ,.e.stni in¬
i' I i • "!„.ii„n ri'om iiroseeiiting
ing the ilefeiiiliints m this ■ ■ lelters
siieli applications nml fi"1" "•'£ . ” 11U
patent. The "bje * “[ r J sl,.dl be to make
Iidjuilii5rttic.il, till! ill"'* on 0[ th(! nllugnil
sneli injunction p«rpU*u J ’*r „1() p.aintiir, n cor-
prior nml pniiiiiioiinl ife , * ■ h.v i„tornioilinto
point claiming, b s ,, 0 ,1ml t
transfers, t l 1 r 1 \ r \ wo contracts
such patents, under uni dated, respectively,
,.etweu.. Edison mull .. r ^'^1871, ns well ns
October 1st, 18i(», i' 1 V£' s , £ t assignments
under mid b> . imtton. The detondmit,
from both ^riSS’ Com.uvny, is a cor-
cott, and l lie agreements between [ Ihmu and Hi,.
Western Union Telegraph Company, under which
(lie Inlter elniins title, are inhoroutlv defective, in-
sufficient and invalid; Hint Hie assignment from
hdison to Prescott; is also void, in Hull it. was pro¬
cured by fraud, and fora consideration enlirulv in-
ndequnte ; and Hint both sucli assignment; and the
arrangement between the Western Union Telegraph
Company and the parties to it were . . . with rail
notice and knowledge, on the part of all concerned,
or tlie prior and paramount rights, interests and
chums of Harrington, under aii.l from whom, ns
well as under Kdison, the plaintiff claims to have
derived the title, which, by means of this action, it
seeks to establish and confirm. The various instru¬
ments upon which that title rests are set forth in
Hie complaint, and are as follows :
/wrs/.-A" agreement of partnership between
kdison and George Harrington, dated October 1st.
Second.— An ssgi enf i 1 irrevocable power
&S55«r*JT" *
. •**
lmi,.- An assiirmnenl. r „
quired, to the plain till', dated January inn moi
tier.eiil/i.— lay Gould’* assignment to the pin
till', dated July 'Iflth, 187f>.
Upon these instruments and upon all the fa
averred in tlie complaint, flic plaintiff obtained
preliminary injunction to which reference has In
mnde, and which is still in birce ; and upon th
instruments und upon all the Tarts ol the case,
they appear in evidence, if is now insisted that
plaintiff is entitled to the relief demanded.
It should lie remarked, at the outset, Unit in so
as the averments or the complaint tend, directlj
by implication, to impeach the motives and p
poses of tlie defendant Prescott, or to impugn
good faith, or I hat of his counsel, in procuring
auqiting f.o.ii Kdison Hie assignment o An
It) IK7.I Ihev are not only unsupported, but
nlii.ndunlly 'refuted by proof. ’Ihc '''lanoiis
tween Kdison and Thu Western l m<> 1
Company, and his couliact with resco •
entered into, as he les.ilies hmisell, ; ‘
raarJTKSSsR'ff;
counsel, either in milking his
nr in entering into the formal
resulted from its ueceptnnee.
first proposition.
,-i i it \] h
Indeed, any suggestion of frond, us premised
upon either Kdison or Harrington, is so effect mil! v
refuted by the proofs, that the iinpiitntions of (lie
coinpliiint, m that regard, duly deservo mention ns
atfording suitable occasion for deprecating the ex-
traordinary mis pprol i si n under which it would
seem that they must have been made.
I’l'0 arguments of counsel for (lie plaiutiiV sub.
stanlially eliminate from their cuse the element of
frauil, as iniputnhle to either of Hie defendants,
nnd their very aide and ingenious discussions of
he various questions involved proceed solely upon
the theory that “ the inventions described in the np-
p ications referred to are the property or the pltiin-
e,t lul' •»?' « lW‘l. at least, an equitable title,
.rough various mesne eonveyunces from Kdison."
be original inventor . reof. “ The controversy
l’.'i'dos," as one of the counsel for
1.1 "in. 1 ...nphatie.illy asserts, “ is o„eof///f« onlv ;
o c., winch has the preponderance of legal or eou'it-
"b,° n«'" 10 ,llu inventions described in the bill.”
resneetivn <>( this question, ir-
con Ini 1 • f /; 10 allegations of fiuud
contained m the complaint, that, the attention of
•dnoh,Tf' hn? 'T' ,'liliS°'.!Iy directed, and the
a lei r "mra1 a,; ,s »°«- t0 1 c. nun it 1 « n li
.. I'.ief summary or the grounds on which it rests.
Vs 1 h fd i I is the com id i„t us-
Conniiissioner of I’atenls. liis decision accords to
Kdison and Prescott, as assignees of Kdison, and
as “ possession of the legal t it lu to the entire inven¬
tions,” the right to receive the patents therefor,
when ready for issue. Hut it is not contended that;
this decision lias the conclusive force and effect of
a “ funner adjudication,” nnd if distinctly appears
rroni the evidence, Hint, in determining the ques¬
tion submilcd to him, the commissioner wnsguided
and governed entirely by the records of his office .
Indeed, in his decision, he expressly disclaims any
authority or jurisdiction to consider evidence, out¬
side the record, ns to oiilstnndingcquilies.
The whole case must, therefore, be regarded as
an open one, and must 1 \ i »«/ '>m*
without overlooking the force of the nuixini,
“ I'nlior ettl conditio dcfcndenU# ,” the applicability
of which was frankly conceded in the opening
argument of counsel for plaintiff. A few observa¬
tions, therefore, as to the conditioner the delend-
nnts, us the parties assailed, may properly precede
Prior to the year 3870, the elect ro-niagnectic . sys¬
tem of Professor Morse, constituted the duel in.
striimentnlity by which teiegiaphle communication
was effected in this eounlry. Lmler that sj stem,
as then in practical use, only . . message could
1 1 f n-warded over one wire at one* time, unit a
skilled operator could transmit only about thirty
words per minute. Such transmission was cheated
by alternately closing and breaking an elocti io ui-
unit by means of a key operated by the huger.
its the complaint us-
iving instrument or magnetic relay, to which was
Inched a .sounder or register for indicating or rc-
n’ding signals. There was, however, then in ex-
fence another system, known ns the “ automatic ”
nder this system, messages wore not commitment-
I directly by the hand of an operator applied to
key, hut; were previously prepared for transniis-
m, by an independent process, and were then
iinsmilted automatically, by mentis of merlinniVin.
illeront methods were employed for preparing
jssages for aulomntic transmission, the most sue-
ssful of which, for practical purposes, was that
which perforations, so grouped as to represent
■lets or corresponding signals, wen; punched out
strips of paper. The performed strips were then
"‘Inclod by an automatic feeding apparatus over
nelallic drum or cylinder, upon which they were
isely pressed by a supervening metal roller. (jon-
it between the roller and the drum completed and
sed an electric circuit, which, of com sc, was
>k,n h.v 'll'' interposition or the’ per¬
illed paper, except at the points where
t perforations occurred. As the perforations
nitled of contact between the roller and the
mi, Iho circuit was closed at such points, and
mils were accordingly transmitted bv fhunllor-
e action and suspension of the eleclric-ciirreut,
istantinlly as under the Morse or elecfro-mag-
tc system ; the dill'erenee being, that, strips of
rotated paper, with the appartitus tor efl'ecting
tr automatic motion, wore substituted in place
the key of the operator, for. breaking and clos-
thc circuit. . Messages, thus autmnaticallv
was connected with the line '
with the solution, passed o
nuctud with the earth, the e
then rendered continuous anil complete. The
transmission of llm elcctric-curronl through the
chemically prepared paper, from the stylus to the
drum, produced an electro chemical decomposition
of the stylus, which resulted in leaving colored
marks upon the paper, corresponding to the perfor¬
ation in the paper strip used nl the point of Irans-
1m nmj tll) ||u, year IH70, the defendant,
the ’Western Union Telegraph Company wits
htfoelv ciignged in the business of transmitting
trleWmliie messtiges bv mentis of the elect ro-mag-
nelie system. At the same lime, . . 'ge Harring¬
ton with others interested and associated with him
for’tlmt purpose, was endeavoring to develope, in¬
troduce and operate Iho automatic or elect m-ehem-
ieal system, under certain inventions «PJJ \W> <
thereto devised l.v Mr. Chile, ami consisting,
ofa mlWnling machine for more rapidly prepar-
lug llte strips of perforated paper ..ml
tic iransiiiissioii, and, (-’) "I wlm •
over How dam,” U»-“ #»*' 111 wll"'h, w,s
crease tlie raiddiiy of tiansmission, hy rein, tog
the line of nil exeessiv iccumtilalmu of electric
1.V causing a confusion of signals. Sad. co..r..s.on
signal, betoi'o the sueeeding current supervened
and commingled with if,.
A continuous current was thus induced, notwith¬
standing the breaking oC the circuit, which con-
fused and combined what were intended to be suc¬
cessive and separate signals. The overflow dam of
Little was intended to obviate this diflieulty. bv
providing means for the more rapid discharge of the
excess of electricity which continued operative after
breaking the circuit.
Lilt, Little’s inventions were not so effectual in
obviating the diflieulty thus experienced, as to ren¬
der available, to their fullest capacity, the ineohsin-
tcal and chemical devices employed, as above stated,
in the automatic system ; and tiie ingenuity of Edi¬
son had already been directed toward further in¬
ventions and improvements tending to that end.
Edison had also directed his attention to what had
then long been known as the “duplex system;”
and, as early as 1808, laid devised an electro-mag¬
netic combination for thosimuitnneous transmission,
over one wire, of two messages in opposite diree-
ions. This device involved no element peculiar to
the automatic or electro-chemical system, and does
not appear to have been favorably regarded by
those interested therein. *
The same resnit had been previously achieved in
Austria, in Prussia, and in Holland, and had beon
in practical operation, for years, on a line connecting
the cities of Amsterdam and Rotterdam.
Tiie transmission of two messages over one wire
in the same direction, at the same time,' had
also been effected by Kramer and Los elm, and by
■ combination will, the duplex or contraplex system,
n Hereby- two siniullnneou.s messages wore trans¬
mitted in opposite directions, what is now known
as qundruplex transmission had been effected, and
was in practical operation, although without much
practical success, except for short distances. The
mechanical contrivances, by which such transmis¬
sion was tlieb effected, were, however, quite different
from those subseiiuenlly invented and now em¬
ployed. Indeed, the value and practical utility of
anv system of multiple transmission, if not alto¬
gether problematical, was, at least, debatable, and
the adherents of the automatic system insisted
earnestly upon tiie great superiority of the method
adopted and practised by them.
Such was the condition of tiie telegraphic art,
and such were the relations of Edison, Harrington
and the Western Union Telegraph Company to
each other, and to tiie different systems or process¬
es then in vogue, when tiie ] i t lorsli 1 D o cut
of October 1st, 1870, between Edison and Harring¬
ton, was entered into, and when the.siibse.pio.it in¬
strument of April 4th, 1871, between the same par¬
ties, was executed. Those instruments are liurent-
ter to bo culisidei, d, the light alloided by these
circumstances; but. pursuing the inquiry asm he
position occupied by the tlofeiul.ini*. who.i he
present suit was commenced, we n.si. ’
“■- "■■my; i :
deuce in regard to Edison s tom
ho b^Oi^s^LUioliH which existed be-
i IXS&ttZZXZZ*
bfofo u y IS* lib under their partnership agree.ne.i
L o he vise, such relations were .Hen terminated
bv , he a ..... . lactiiu, and consent of the parties.
Jt Unit bii.sinu.ss at the place where it had pro-
ily beun carried on, while Ellison formed a.
toivship with one Murray, for prosecuting n
or Imsinoss, elsewhere. Tlmt. the partnership
iirringtou and Edison, with respect to smdi
i fuel it re, was I lien wholly at an end, by their
ion eon. sent, is rendered uurtain by tile fact
Edison and Murray were tlieruafter employed
arrington and his associates, to nmniiraoturo
inery and apparatus Tor use in automatic tei-
iliy, and were paid for Ihofr work, from lime
ne. in regular course of lmsiness. Edison,
ver, still conlinued his experiments, with Idle
t of improving (lie aulomalie .system, and, at
ime lime, devised numerous coinbimdious'for
ingand facilitating duplex or miilliple trails-
'"I. In JS72 tile Western Union Telegraph
'■my '"iqniml Hie right lo use certain impor-
iniprovemenls in diij.lex telegraphy which
een made by one Stearns, and were known as
' Stearns duplex,” and thereafter adopted
mprovcnienls and introduced them into jime-
use in tdie proscenium of their extensive tele-
ic business. At. t his juncture, Edison, who
reviously been in I lie employ of tdie Western
ielegraph Company, and was acquainted
is officers, applied to Mr. William Orton, its
out, through one N. C. Miller, foremploymenl;
iventor, proposing to devote his attention more
"'any to improvements it. duplex telegraphy, '
oin winch lie, in common witli those interest-
a tf ton ail ic telegraphy, apparently rewarded
for as only valuable t<
grapli Company, in I
and fortify the rigid. s (
Stearns patents, which
led, ivy creating as it
‘‘patent intricacy” e
fringemonts of, or atli
tlie use of tile diijde
Stearns patents, wliicl
purpose of tlmt coni]
lain.
Tlie negotiations bet
minuted in an agreetm
nrv, 1873. There is I
Western Union Telegr
and to tlie effect, that
upon improvements i
exclusive lieuelit of til
deavor to develope ini
poses, plans and conce
mind, relating to the <
cure patents for any i
to which lie might mu
sign such patents, win
Hint in making such
melds, lie should have
apparatus, assistance
panv could furnish, in
sonuble compensation, In ho mutually ugreod'upou
or, in case the parties should Tail to agree, to he
determined by arbitration.
It seems hardly worth while to refer, in detail, to
the evidence by which this agreement, in all its
parts, is shown to have been made. That it was
made appears, not only from the direct testimony
or the persons immediately concerned in negotiat¬
ing it, and of Mr. Prescott, who states that in Feb-
niar.v, 1874, its terms wore specillcally stated to
him by Mr. Orton, in the presence of Kilisou, but
from the fact; that both the parlies to it forthwith
proceeded to carry it into practical operation and
effect, in the manner prescribed by its terms. The
course of action, subsequently pursued by both in
their intercourse with each other, is not only con¬
sistent. with the existence of precisely such an
agreement, but can hardly 1m accounted' for on-nny
other supposition than that just such an agreement
prompted and induced such action. Edison at
once began to prosecute vigorously his experiments
in duplex transmission, and continued them until
IH7-L frequently reporting progress to Mr. Orton, in
the meanwhile, and availing himself or the facilities
afforded by the wiresand workshops of the Western
Union Company. The company recognized its
obligation to afford, and, in point of fact, did afford
and furnish such facilities, assistance, and mate¬
rial, as were rmm time to lime desired by him.
Prom the 4th of April, 187!), down to ■December.
'1874, Edison rendered frequent, reports, both ver¬
bally and in writing, in regard to his failures and
successes, and willed for and received such imple¬
ments and assistance as he deemed essential to
the prosecution of his experiments and the devel¬
opment of his plans. On one occasion, he represented
(perhaps it would he proper to say, complained) to
sf s « -
S11(,1, iis to enable him to make the pi y - •
'«*•** srs
ri'i“ «“"'i«'"» i-"
sequently, no mini. »- tbe nerformance,
complaint made with respect, to
h-i.
after his return lrum )L;,‘ V()1.,4B|1(11) „f the
Mr. Edison being 'd 1 ,, wo,dd aid him in
llB obtained
the company for pt»tlms ’ 1
divided equally-
appa
Company ; and, also, to show that, at the thnlfofjts
date, Ldison had not sueeeedod in completing and
perfecting ins inventions. It seems fo recognize an
obligation, on the part of (lie writer, to “do some¬
thing with duplex,” and to explain or account for
t0 AM dine, to fnHii such obligation
Jt also seems to recognize the Western Union Tele-
feiaph Company as the prospective purchaser and
assignee of such patents as should ultimately be
obtained for the writer's duplex eon 1 m fi< i s
JtiMi short, such a letter as mightwol! be writ-
en, if the agreement between the writer and the
\ ostera Union. Telegraph Company, above set
had been w^i" ‘"““'I "1^° ,,B ,,tnte,'l’ “,,(l ^'cseott
d been well aware of the terms of that agree-
limit. It would scarcely have been intelligible to
Prescott, had no such agreement existed, or ad 1
been ignorant or its purport and scope.
However this may be, tl e p, , ositi n is m 1c.
b> Edison of his own motion, and he has not vet
been heard to disclaim it, or impugn its proprietv’on
iponsc to Edison S proposal was made by Mr. Pres-
m toiw rirti?'rU|,|W t.(’.0n"3"lt witl* dmt gentleman
lefoie giung a positive answer ; but, Tinon Mr
3r o..;s return the matter was submitted T him
leu I S r ' "# b >" >el 1 ott, on
he 1st da} of June 1874 iccepted the proposal.
The relations previously, existing between Edison
respect to “duplex, were I oil, i i • >
full V stated and explained to 1 rescott l>> Mi. 0
Ion" in the presence of Edison, although, indeed,
Prescott, would seem to have been previously cj.g-
niza„t.ifthen,;nnditnu.ybe airly assumed
such agreement operated upon h.s mind b. min
the acceptance ,.r Edison's proposal. O i l -
;,f June, 1874, Edison submitted to 1 lesi ott, to
signature, the dr.dl of .. contract which he l.ad
himself prepared and signed, and uhi ;
tended to express, more formally and explicitly,
rtnderslnndingalreadyexislii.gbetw.'enthein.^m
lnodilieations suggested by Pi.~--.tt * » > ^
upon adopted, and, on the lit h of ,1. ^1^
more formal and explicit instrument » '
executed, acknowledged, .h.Uvorm b«ni :lbj
i™'“"U -i;”
. . . . . . . . i. . ■ i . ...-I .t.
might be made by either ..r H en., ^
,w cq»»'; olhor »!«•«>«
8(»(Miro HIKill ll»tUi.8t to : - intd'i'S
i.inko an assignment and tm«ser * W*
to him. in due fomi. satin t. ' t|.
in him, and to enti le llllisnance of thi
United States Patent OII.ee I J ,t wft
ventors, and, mold'. " f eontract, that <
its purpose iiml itlt^ t. i J
August Hit (i, tSet, " »i; - (iniie at the install!
pared and executed. bis « * ,|11Ved by Ed
of Mr. Sen ell, a puloli s" ( (ll.,ire paten
non md Prescott to «#||| s m„ ,dv
for Edison's duplex >' • ... in ),
anili day of August, in tho same year. Thu ap¬
plications 0-1 to 100, were entered in the
Pnlenl Otiico on thy 1st. September following, mid,
together with I lie other applications subsequently
tiled, wore artenvnrd ttclod upon h,v tho Commis¬
sioner or Patents with flu* result; already slated.
So far ns Afr. Prescott la concerned, tliu recording
of the deed or August lllfh, tho tiling of. such appli-
cations, and the payment or sundry ineidontnl ex¬
penses eonnec.ted therewith, consummate the trails-
action which the plaint iff, the Atlantic and Paeilie
Telegraph Company, is endeavoring to ini pencil,
and constitute the evidence of title upon which lie
relies. The rights or tile Western Union Telegraph
Company, under its agreement with Edisoi . .
further fortified by a payment of go, 000, made to
him on the 10th day of December, 187-1, in compli¬
ance with his request, and by the puvnienl of a
like amount to Prescott, on tho tilth day of .lanua-
ry, Sll,!'1 payments were made as part or the
consideration, the amount whereof had not; vet
been determined, hut which was to lie paid by timt
company to Prescott and Edison, for an assignment
of all their right, title and interest in the inventions
T 'mprovenionts relating to duplex and qutulru-
piex telegraphy, for which letters patent had then
>eun solicited on their behalf, and which, with such
letters patent, they had agreed to assign to that
it between them of duly Dili,
uccuralely the terms of the ugri
refers. Put, construing it in tli
ciimslanccs under which it was
auction with all the evidettc
lions in which the parlies I hoi
doubt that it expresses, ami wash
an intention to have the mon
it ' purports to acknowledge,
stated, and not otherwise. The
subsequently ensued between Hi
and the Western Union Telegi
respect to the price to bo paid
only important to the parlies
corned ; and, indeed, as betweei
contracts and other instruments i
the olfer made by Kdisun on bcl
Prescott, on or about thettOIhlJ
render supurlliious any couside
lion wild her if was or was not
revocation by Edison of that ol
fusel by the company to accepl
forms, would not operate to n
between himself and the eoinpat
Prescott aequiied title, and v
dale of such oll'er, was recoj
20
•>l
and a failure to agree uj>on the contract price, nr to
appoint arbitrators to determine it, would merely
open the door to its determination by the proper
judicial tribunal, in tile manner prescribed by law.
It is insisted tlmt the agreement between Edison and
the Western Union Company is invalid under the
Statute of frauds because not reduced to writing,
and subscribed by the parties to it. As intimated
on the argument, I am of opinion that it does not
contravene 'the provisions of tlmt Statute ; and it
laid been so far executed, when Edison lirst at¬
tempted to recode From it, that a Court of Equity, in
my judgment, would not only recognize its validi¬
ty, but would lie fully warranted in enforcing its
performance. With respect lo the assignment
from Edison lo Prescott, dated August. 19th, '187*1.
I concur in opinion with the Commissioner of Pat¬
ents, who held that it vested in Prescott, tile legal
title to an equal undivided half interest in tin; in¬
ventions described in it, and that it clearly entitled
him lo insist, as against Edison, that under it, bet¬
ters Patent should issue to Edison and himself, as
tile assignee of Edison, agreeably to the terms of
their several applications. It will be observed tlmt
I liese conclusions are reached, merely with respect
to the rights, inier'sese, of Edison, Prescott and
the Western Union Telegraph Company, and are
wholly Irrespective of the alleged prior ami para¬
mount rights of oilier parlies, which are yet to lie
considered. As between Edison and Prescott, I lie
transfer or August Tilth, 187-t, was a valid transfer.
As between them and the Western Union Telegraph
Company, the contract whereby that Company
claims to have acquired an interest was a valid
contract.
(I) that, its language cannot ho construed as in¬
tended to effect a conveyance in present!, but only
when letters patent are granted; and that it can,
therefore, at best, be deemed merely an executory
contract Tor a conveyance, to be made when
the contemplated contingency of the granting
of such letters shall arise. It. is a familiar
rule of construction that the intent of the
parties, ns expressed in the l sti t it govern
and control, and that such intent must be gathered
from the whole instrument. The lirst recital is to
the effect that “ Edison hue invented certain Im¬
provements in duplex telegraphs,” and that “said
Prescott is entitled to an equal interest in the
same.” These words constitute an acknowledg¬
ment by the grantor that the grantee is entitled to
an immediate present interest in such improvements
or inventions, and are inconsistent with the idea
that the object and purpose of the instrument is
merely to confer an interest in the patents therefor,
when* the same shall be granted. “Therefore,”
the instrument proceeds, (that is, because the
grantee is entitled to such immediate interest,)
■ “and in cnnsiderntion.of the premises,” (that is, in
consideration tlmt he is thus entitled,) “and of the
sum of one dollar * * tile said Edison
has sold and assigned and does herein set over and
roneeu unto the said George H. Prescott,” what I
An undivided half interest in letters patent when
granted? Certainly, but not that alone. The
grant is of “one undivided half part of the right,
title and interest of every character, in, to, under
and connected with each and all the aforemen¬
tioned inventions, and letters patent on the same
when granted (
Hie ingenious . . ml of one or the learned
counsel for the plaintilf, founded on an analysis or
the assignment or August, 10th, rails to satisfy mu
that this instrument is, on its race, nugatory,' con¬
tradictory, or ineil'ectmil to pass title, it is insisted
Language
transfer, in
more explicit, to express an intent to
present i, an interest, in the inventions
could scarcely bo fill moil. Such transfer would
cany wifcli it., by implication, u rigid, to have tho
patents issued in the joint mtmus or tho inventor
and Ids assignee, and, accordingly, the instrument
“ authorizes and requests the Commissioner ot
Patents to issue the said letters patent to Thomas
A. Edison and George B. Prescott, as I he; assignees
of said Edison.” AVImtever may be the oiled, of
this request, it. by no means impugns tho grant of
an undivided half interest in the inventions, which
is, previously, clearly expressed. Whether a man
can assign to himself an undivided interest in wind
lie already owns is a question, which, perhaps, it is
unnecessary to determine, the real and important)
inquiry being whether the instrument is sullicient,
in law, to pass the title of an undivided interest
therein to another. If so, the elfecl of tho instru¬
ment must be to leave the parties vested with the
whole interest, as tenants in common, in equal pro¬
portions, and a misdescription, if such it. he, in
calling them hath assignees, in no wise alters their
mutual relations or the nature of their respective
rights. It. would, however, appear that, a practice
exists, in tlie United Slates patent oliiee, under
which tlie iuvontor. and ins assignee of 1111 undi¬
vided part interest, in tin invention or improvement,
are, both, recognized and designated ns assignees.
Thus, the Commissioner of Patents, in his decision
upon the applications in this case, directs that tlie
patents lie granted to Edison & Prescott, “as as¬
signees of Edison,” agreeably to tlie request con¬
tained in tlie instrument under consideration.
And, in numerous instances, Edison appears, by
exhibits introduced ill evidence, to have been de¬
scribed in specifications annexed to letters patent
granted to himself and Harrington jointly, “ns as¬
signor to himself and George Harrington, ” and such
letters patent contain tlie lecilal of such tin assign¬
ment, (See defendant’s Exhibits (1, 7, and plaint¬
iff’s Exhibits 2, 3. Patents 12-1,8(10, 131,8(18,111,-
777, 1-17,311, 1150,813, 100,10.7.)
The “ terms and conditions,” upon which tho
transfer is declared to have been made, do not, in
my judgment, adversely all eel. its validity or impair
its eliieaev, so far as the question of transfer In
present! is concerned. They are to-be construed
in uccordiuice with the intent, of the parties, and
lather as cnm-.ntints than uom/Uitnis. If they c.m
lie regarded, technically, as conditions, they are
conditions subsequent, ami, as such, do not prevent
the estate front vesting.
The onl v other objection to the validity or tlie
transfer is that, it evidences and effort nates an mi-
eonscionnblo bargain. This objection bus neve
been urged by the grantor, in person, and is alto¬
gether ex-post fueio. It was his own
as wo have seen. It was not, thoughtlessly m hui-
riedlv made or consummated. No undue ddluence
nmiears to have been exerted, no fraud to have
heel, practiced. Both parties acted aaderstmiding-
ly, ami 1 think both should abide by then actum
heaving out <>f view, Hum, theehiims id the plain-
till’s to a superior ami paramount rigid, rounded oi
the relations of Edison to ll.irriiwu.il, prior »
ti\ us till oil i l 1 1 [ li luce n l
tenants In common, in equal proportions, with a
legal titlu to the inventions in question, niul were
entitled to receive letters patent, lliercfor; and that
the Western Union Telegraph Company became
equitably interested in such inventions and patents,
and wtts entitled to a transfer thereof, whenever
such patents should issue, upon payment there¬
for of tlm proper price, to be ascertained and de¬
termined by agreement, arbitration, or appropriate
judicial action.
Such being the ense, no notion on the part of Ud-
ison, subsequently to t ho acquirement by Prescott
and the Western Union Telegraph Company of their
respective rights and interests, could operate to im¬
pair or divest their title, or to confer title upon the
plaintiff or its assignors.
Certainly, no one entirely familiar, as .lay Gould
is conceded to have been, on the 4t li of .lanuary,
187(i, with nil the facts connected with tile deriva¬
tion of the defendants’ title, could then, by deed
from Edison, acquire valid claim to aught with
which they had previously become vested.
We have, next, to consider whether the plaintiff
can successfully assail the title of the defendants,
thus acquired, by virtue of the two instruments, to
which Edison and Harrington were parties, dated,
respectively, October I, 1870, nnd April 4, 1871.
If, by virtue of those instruments, Harrington,
the plaintiff's original assignor, acquired, as against
Edison, no rights or interests in the inventions
Which now constitute the subject milt ter of this con¬
troversy, the plaintiff lias no just cause of com¬
plaint against tile defendants.
2o
If, as against Edison, Harrington did become en¬
titled, under those contracts, or either of. tlicrn, to
an interest in such inventions, the question arises
whether such interest was of a character to over¬
ride the rights of the defendants, s i! s q l t tl ac¬
quired from Edison, irrespective iff the fact that, in
the acquisition thereof, the defendants dealt m
good faith, and without notice or ins claims oi
t iiose of his assignees.
And, ir the good faith iff Hie defendants and the
question or such notice are material, as osseii. in
element, of inquiry, it will be further neeessn > to
determine whether the r.icls, relied upon f » .tin.
purpose by t he pi lint IV, are sit 111 t t t til £»'
the position of defendants as innocent l’nrchasem
in good faith, and to charge them with such notice.
The burthen is upon the phiiutitVs to establish
either a prior and pa.iimou.it .merest, . »
character as to render the question of defendants
good faith and of notice to then, iiiimiitenn , o. o
show that the defendants were ..avi«ea, p ut up
on hmiurv, wit h respect to the relations all unity cx
Sr».n, 10' -o "
meats.
” '' V , , \ Smss:
Mil! business mid interests of the lirm, mid
i v inventions or Improvements, made or to he Hindi'
■’ him during its continuance, were to enmu mid
long to tliu parties, in the proportion of one-third
Kdison, mid two-thirds to i larriu^lon. Any in-
■it ions or improvements which Kdison might
nke, under or pursuant ton coitlrurl nlrendy ex-
I i n<r between himself mid one LulVerls, wore ex-
•essly excepted from t he opera! ion of the part -
•whip Mgmimenl ; lint, in mid by Hint agreement ,
i lionnd himself not to invent, under said coiili'iicl
iv innoliinory that would niililnte ngninsl anlo-
ntie telegraphy, mid not to trmisfer to nny per-
in. without llmringloii's consent, nny invention or
nprovenienl t ha I might lie useful or desired in nit -
. . telegraphy. For nil such inventions or inn
loveiiienls ns Kdison should make, oilier limn
lull ns iilian id lie suggested or should arise from
in current work in I lie nimui factory, it was pro-
ided that lie should receive a reasonable and prop-
r compensation, in addition to, and irrespective of
is interest in the prollts of the lilisifress. I’rolits
ere to lie divided in the ratio of one to two, I hat
i, one-third to Kdison, and two-thirds to liarring-
rhnuical operations ot tile nun
l lie partnership with respect t
business, and the entire ailing
and there was some evidence,
lublisli a recognition or IHIttui
common interest betweeeli t in
to inventions, after their pari
manufactu rers, bail ceased. A
id such evidence Inis failed to s
mutual detjHngswith respect I
tin; patents granted therefor,
Kdison intended to assert, ora
in force, for any purpose, of
ii it1 n t of October I, IS7U. All
sislenl with five llieory of an
partnership relations, and ol
interest with respect to the p
which such evidence relates,
poses iill'ecting inventions, m
Kdison, 1 think the partners
deemed to have been snpeisc
of April ‘1, I Sit.
if any other agreement than that, of October 1st,
1870, I think itmusl ho assumed, that in executing
the instrument of April -1th, 1871, the parties toil
intended to refer either to Unit agreement or to
some executed modification of it; and, at all
events, to put such a construction upon whatever
agreement then ‘existed between them as should
he conclusive with respect, to their future relations,
which were then about to he specifically deli tied
nnd proscribed, it is (piitc clear that the inven¬
tions and improvements, to which the instrument
of April d til, 1871, was intended to apply, were
originally embraced within the purview of the
partnership agreement, and J think it may he bur¬
ly inferred, that the intent and purpose of the
parties, in executing the new instrument, was to
limit and define, thenceforth, their common inter¬
est in, and mutual rights of control over inventions,
in the manner, and to the extent tlieroin expressed.
This inference is supported and sustained by the
suggestion already made, as to the interest
which Harrington ami ids associates had
in the development and practical suc¬
cess of automatic telegraphy as a system
of business communications nnd correspondence,
nnd, pnrtieulnrly, by the feet Hint ill his petition
of January, Slid, 1 870, addressed to the Commis¬
sioner of Patents, playing that patents limy issue
to Edison mid himself, mid not, to Edison nnd Pres¬
cott, for the in I 1 1 1 in Edison’s ap¬
plications then on file, the hs gi l el I t 1 power
or attorney of April -I. 1871, is referred to us con¬
stituting the evidence and source of his title, while
"IIIIIIWIIUII l)J oniii: , .
and assignment,” that “Mr. Iliirringten i
title in these inventions.” I deem it apparel!
both Harrington and Edison regarded the t
meat of April -l ns an interpretation and emboil
of such provisions or the prior cont ract ns ten
in force, mid ns substantially superseding it,
is still another eircumslance that should be
in this connection. In his letter to the com
M, mcr, Edison slates that his niraugemenl
Prescott was made under “mi erroneous u
sion." lie, of coarse, refers to I he lionet, Wit
more than three years he had entertained mu
upon, thill his invenlions in duplex telegi tp I
at his own disposal, and that in dealing »t
cot! he was hampered by fi#i.-*osmel iniis..
mining this impression, it 's , )l(
this period, . . . ml1 h.ut uHm ^
nersldp agreement as opu.iU'1 -im ,
could nol have regarded the nssigiiimm a
id alloiney. as including within 1 ' ,1|,I(|,,(|
Otherwise, his whole I 1 -
Prescott nndO. ton 'v.mld 1m '
mere misapprehension, bate. 1,1 1 " ‘
„,l we me without the hei
inform us, mat «<- o
.11 , ,1, » u»y
lontal, and that its subsequent interlineation rtiere-
in, even if unauthorized, was not fraudulent.
For all purposes of tlie ease, the iiisti'iunent will
be deemed to covor inventions applicable to iiuto-
mat.iu telegraphy or to ineelianienl printers; and, no-
eordingly, our next inquiry must lie direeled to the
applicability of Edison's improvements in duplex
telegraphy, ns described in his several applications
enteredin tlie Eatent office, to the system or met hod
of telegraphic coniinuniciition, designated in the in¬
strument ns “automatic,” or, to “ nieclianical prin¬
ters.” A large mass of testimony, on the part oT tlie
plnintilis, was introduced for the purpose of show¬
ing that the combinations and devices described in
Edison’s applications could be advantageously
employed in connection with tlie mechanical and
chemical appliances which, in April, 1871, consti¬
tuted the essential feataresor what was then known
as tlie aiitoimitie system, and that such appli¬
ances could he effectively adapted to the transmis¬
sion of one or more simultaneous and concurrent-
signals in both directions, under Edison's improved
methods. And it was strenuously contended, mid
is now claimed, that “if the principle of Edison's
improvements can lie employed where the auto¬
matic perforated paper at tlie trnnsmilling end,
and chemically prepared paper, at the receiving
end, are used, then is quadruplin': applicable
to automatic telegraphy.” 1 am unable to yield
unqualified assent to this proposition. It I under¬
stand rightly the nature and extent of those im¬
provements, they involve the application of no new
■principle to telegraphy, whether automatic orolec-
Iro-magiietic. Qundruplex transmission laid been
effected, on the principle of employing, in combi-
said that 1
in controversy,
so testified. Ill I
hint by the Con
.mi-rent, and iuci
-, to transmit two messages own
, ore known before 1871), blit the in
those reversals, uinl lie- increase I
[he Citneut, as shown in case 3. "
•• Other devices, far less oiled
.veil to accomplish the same ]
i ue' distinguishing peculiarity
new method, devised by Edison, consist,
the employment or distinct and »^j“«
•iml receiving instruments, one opci.ili"„ >
versnl'of polarity, the other hv alternately tam
iMg and ^creasing '!;0S,t|lm,,,“,1'«r.' The t
HI*** jilKl uurmisuiB ' " ' * . ,
separately and apart from the l» ;
peuidenee of the two keys ami .ecc.w'.s l,o,e
Other eonstitules the novel and pm '
purpose of sending .-cp.u. •• ” , , jt
was the devi. . . Edison, and he i -mh-n dd
ti,,„'iy:"seru'a|;di;M,-'||,:;:il,l,"„(ms.ic,
farther minor b .1 , meinsia
riJ^'SsSSibLmCof.hcses . .
vices that eotisit tiled. his Jtiw-ntim^f ^pmlm*
;r\s,whm£rl,;"S.Si^>-
described in his a,q..ica«h..m ami
m. invention or
malic telegraphy, and u 1 |1R,ss:lges ci
ciple upon which t; one wire in the
concurrently transit, « ’ 1 ,)()1»rtty ot ll,
34
employed in connection with perforated paper or
any other automatic device at the transmitting end,
and with either a chemical or magnetic receiver at
tile ocher. The cross-examination of Mr. D’ln-
freville upon this point is signilicant and instruc¬
tive. In his direct examination lie had expressed
the opinion that, to a certain extent, the tirst claim
in case 00, or the principle of the patent in (hi! first
claim, could be applied to automatic telegraphy.
The apparatus, lie said, would remain the same
at the transmitting end, hut the receiving appara¬
tus would require adaptation to the chemical sys¬
tem. and the chemical mode of recording signals
would be employed.
Mis attention having boon directed to this state¬
ment, he was interrogated, and answered as fol-
Q. You stated that if you put thu chemical
paper in there, you could make that applicable to
automatic telegraphy.
A. Yes.
Q. Do you mean to say that when it was done,
if it wore done, that would he the combination of
parts and devices described in thu patent 00?
A. It would be the application of the tirst claim
to automatic telegraphy.
Q. It would he the application of the principle,
A. Of the first claim itself.
CJ. What is the first claim ?
A. Transmitting two distinct messages on one
wire in the same direction and at the same time,
one operating by reversal or the battery current,
the other by increasing or decreasing tile current
from tlio buttery.
Q. The abstract principle slated in that claim
could lie used in uulomiilic telegraphy, you say ?
Q. You suppose Unit the eliiim lias got attached,
llt the bottom, the words, “substantially as de¬
scribed?’’ .
A. I have not scon it; flint is nil I see.
Q. Suppose the words “substantially
scribed” to he written in the chum ; suppose von
saw them there, at the bottom of the chum, tliei
would you suy that it wus applicable to automatic
telegraphy?
A, That would vhant/e the ijitetslum,
Q. You stated it was applicable, mid that you
would put the chemical paper receiver in l*1™*
of the mechanical or electro-magnet receives* jou
said that, didn’tyou?
Q. Supposing you did that th tl it H
not lie substantially thu thing described in tins
patent, would it i
. .
Q. U ,woi!id',iiot1be til tilings substantially ns
described in this invention, would it •
Do furl her malHicil that the first claim of ease 03
inclining, of course,
used in the Wheatstone -system « ‘
asked bv the Court whether the whole tom
covered by that claim is .pplIcalU^ ^a »ho , h
iiutoiiiiitic telegraphy, he replied, As it is tl.ct,
,,,,,,, ...» oi ;>■« .sr'J:
SfS’ "5 1 i o • ' ", :
■■ "'I '“irs-v - 'e*-
nevertlieless. one of tll,n • .llteitaiii diil'ereiit
pert elactricinns seem ‘ 01lu not
tricity, ami with all tins apparatus uni
making ituvnilnblu for (olographic purp
woll shrink from itsdetormimition. Peril
termination is not essential to the derisi
case. All parlies, howover, oonouriu di
not in demanding that, for tho pttrpos
ease, it shall lie judicially determined.
A very deliberate and protracted exam
the testimony has failed to satisfy me tl
applicable, within the fair purport and n
the instrument of April 4th, 1871, and III
the parties thereto. The term “npplii
used in Hull instrument, implies illness, ti
ty, suitableness, The mere possibility
an invention or improvement in !<
in combination with the telegraphic
commonly known and designated as i
does not necessarily indicate that any rw
of fitness or aceordnnee between the invi
such apparatus exists. The tpimlruph
and tlie automatic system are both npp
the electric telegraph. Both facilitate t
mission of electrical signals by means of l
ies, currenls and circuit conductors et
both. But it docs not follow Hull they i
cable to each other; in other words, tint
in any sense, suitable and lit for hciicfici
vnalugeous use in combination ; vermin!;
the use of either is faciliated by the eon
attachment of the other, liven the pos-
an advantageous use in combination \
nei esMiiih render them mutually a
Almosplteric pressure and steam powur
applicable to the purposes of ntivignlii
[lmt particular system ot telegraphy, known and
rcengnitced »s tin-* mi t omul it: system ; in other words,
timtsueh combimi lions do not, within the inclining
or tin; instrument ot April -I, 1871, ennstitnto mi
invention or improvement applicable lo uiitonialie
telegraphy.
The sumo considerations are conclusive against:
Hie applicability of Hdison's duplex n nil tjnadrn ■
pi ex improvements lo nioelinnienl printers.
1 regard the descriptive words of the granting
clause of the instrument of April 4, 1871, us snlli-
ciently broad and comprehensive to include all in¬
ventions and improvements in machinery or instru¬
ments tending to develope into practical use the
Littlo or other system ot automat ic or fast system ot
telegraphy, and all inventions or improvements
made or to bit made, that are or may be applicable
to automatic telegraphy or mechanical printers;
but the broadest and most comprehensive sense
that can properly be given to these words tails, in my
judgment, to include the combinations whereby
Kdison’smel hods of duplex onpiadnlplex transmis¬
sion are rendered effective.
Hut, it it be assumed, tor the purposes ot further
discussion, that both or the two instruments, be¬
tween Hdison and Harrington, dated respectively
October 1, 1870, and April -1, 1871, were designed
and intended to reach find cover, and do, ill fact,
or as eipiilable assign
the parlies when the
becomes existent, t /'
1711), but without pro;
csts of third parties,
in good faith, and wi
between the parlies I
others will be prejild
in good faith and wi
protection ; and win
intervene, the reined
be confined to tl
a breach of the
must trot be alb
lo dcl'ositn legal title
hottest lv nctpiired.
on the part of the
inchoate and jmperf
yet lo be made, am
iie granted, are tret
taking. effect upon
dates when Hit! sub,
is ten vo tuul assume
it, ilmmiocl tm oejuit
tlmt equity rcgnrd
parties have Ugvel
ligated mjoro vonseieniiae, mm ims stood m no
stronger or better position than that of his equit¬
able assignor. Tt is only niton equities are in other
respects equal, that, the i . '
is allowed to p
•'prior in tempore
As between adverse elnimants lo equitable iutt;V-
esls in property, all the facts and circumstances
under which their respective titles were acquired,
and. particularly, their reciprocal relations and
dealings, in reference to the subject; matter in con¬
troversy, are within the legitimate scope of in¬
quiry. ‘
If such inquiry result in showing notice given or
improperly withheld, Incites, subterfuge, mn/aJMcs,
an estoppel in puis, or oven a voluntary and pre¬
pense avoidance of “a knowledge of facts which the
re. s' r/estne would suggestion prudent mind,” the
question of priority ceases to bo of importance.
The plaintilV lias strenuously endeavored to bring
home to tile defendants notice of the two contracts
between Edison and Harrington, and lias insisted
that, having such notice, they me not entitled to the
protection alVorded by law to innocent purchasers
in good faith.
Two of (lie learned counsel for the plaintilV him*
argued, with great apparent earnestness, that the
record, in the United Stales Patent Olllce, on HieOlli
day of Afay, 1871, of Edison's assignment; and
power of attorney lo Harrington, dated April -I,
1871, must he deemed lo all'ect tile defendants
with con struct ire notice of I lie prior and paramount
title under which t lie plniniilf claims. Indeed one
lake notice of the transfer elle
deed, but of all the covenan
prused and contained in the pi
tract of October I, 1870, then
by diligent inquiry could hnv<
discovered.
Another, and I believe the i
gentlomon,who have ndvoentei
with such distinguished abili
sntility, in arguing the quest
defendants, relies solely upo
notice and does not refer to t
wise a ITooting the question.
Another of the plaint ill's con
in his brief, that the Act of
priority to a recorded deed i
recorded deed is confined to a
rights after patents issued; tin
thori/.ing the deed of April 4tl
and that “as there was no lot
it, the record of it was not on
contents.'' Another of the p
cates, in a set of pplttts subset
attorneys of record, as well i
that “the Harrington agreenu
U. S. Kecording Act. li¬
lt is not will tt end s ■
varsity or opinion, that the l
lo express its concurrence in
ed, and to hold, with respect
or constructive notice, that tl
meat of April 4, 1871, cn
notice ot' the contents of Hit'
it, bout reviewing, in detail, the evidence upon
h it is claimed tlmt actual notion of the prior
pnrunionnt rights of plniiitiirs assignors, under
Harrington contracts, must bo doornail to have
hod tha defendants, t shall, for the sake, of
•aviating this discussion, already unduly pro-
tail, content myself with stating the result of
deliberations, without extended comment on
evidence.
As to the information claimed lb have been
nnuhicated by Heiir to Mr. Orton, at their intor-
v in Mr. Harney’s ollice, on the liitli and iOth of
le, I87!i, 1 hold that it related and was, intend-
o relate, only to such of Hdison's inventions
[ patents ns were fhaii used and employed by
rrington and his associates, in what was then
iwn and recognized ns the automatic system, of
'graplty ; i. e.. inventions and iialents, facilita-
; the automatic transmission of electric signals
means of perforated paper or oilier mechanical
■ice, and their reception and record on chemical
icr, as distinguished from their transmission by
nils or miinual pressure upon keys for break-
a ud closing • tlie . electric circuit, and
iir reception and recognition . by means
an olectro.magiiutiir relay with a sounder
register attached. 1 am of opinion . that
on Mr. Heiff’s own testimony, and without, upon
y ground, abating. aught from. the full force and
ect,as credible evidence, to: which it would have
an entitled, had it been wliollv unconlradicted
“ e st of all, that ‘any' ^douht was intended
p, be suggested as to the validity of a title, der.ved
directly from l'Mison, to any patent, invention o
improvement, made or to he ^ o
with that other system, the vcia iu .e s
which, as compared with a . mafic, had mu
so recipient and tMn.ill.tv . tope of ill- sun
between the parties to the intervum
the whole evidence sat.slic. me ;
Keiir; nor Harrington, nor .my om »"■'
under or with Harrington in the antomnttc
orise ever thought ofassertinga claim, nndu edit.
^onicui- when he spoke of K.I
over occti red to him '<■ ‘1^; ^ e
right of kdisoti oio .,utomatic tel
cep t in b" I'1 tl um',1 and employed by t
^iSiXinUstedimnndwhocontroi.
that system.
indee-d, Harringtoth 1 J^.mmmtlon of ne(
o thwart and lueieni im
tiations pending between Edison and Prescott,
instead of claiming and insisting upon his
own rights and interests, and protesting against
their invasion, begs Edison, by a flurried note,
dated at midnight, July Oth, 1874, to 'see him
before signing any more papers, and urges, as a rea¬
son for the avoidance of precipitate action in deal¬
ing with his competitors, that a loss of §100,0110
may bo occasioned. At the time of inditing this
hurried message, he was well aware of the nature
of those negotiations, and know that the contract of
July Oth laid been actually signed. If he had then
regarded himsulf as entitled to any interest in its
subject matter, his language would have been that
of earnest remonstrance and indignant protest, in¬
stead of humble supplication and entreaty ; nor is
it probable that he would have conliued his inter¬
vention to mere remonstrance with Edison, when
the prompt assertion or a claim of right addressed
either to Prescott, or the 'Western Union Company,
would have been likely to prove much moreelllca-
cious.
Edison lestilies that it was not until the latter
part of 1874, perhaps a month or two before lie
executed the power of attorney to Jay
Gould, in Januaty, I87fi, tlmi Harring¬
ton. so far as he was aware, claimed title
to these inventions at all. Previously, when
informed of the agreement with Prescott, he
had advised against it, but had not objected “in
a way that would bo an objection.” It was “ when
the machine had got operating, as a qundruplex, in
December, 1874, or January, 1870,” that he assorted
Ills claims. It was not until after he had heard of
the contract or August llMli, 1874, between Edison
and Prescott, that lie inquired of Sorrell, whether
under the phrase “ fast system of telegraphy ” con¬
tained in the Instrument; of April 4, 1871, lie might
not claim an interest. Even then, it had not
occurred to him that duplex was or could be “ ap¬
plicable to automatic.”
It is upon Iteiil’s conversation with Orton, in Bar¬
ney’ s office, that the defendants mainly rely, as teml-
ing’to establish actual notice to the defendants of
Harrington’s contracts with Edison, and of hisclninis
thereunder. I have considered the question of
such notice, thus far, solely with reference to the
version of that conversation given by Keill. It is
but fair to add, that, in so far as there is any con-
Hict, or variance between Ins statement and tn.it o
Mr. Orton, with respect to what: did then occur,
unhesitat ingly adopt as true and correct the version
given by the gentleman last named, and 1 call not
doubt that, in conversation with Orton, lit* It nuu
claimed, on behalf of either Harrington or himself,
imv inventions of Edison’s “other Ilian those pat¬
ent. which were in use by ^ WihHnnUe jam.;
pnny,” until the year Ih/o. Mi. n .
tied.
2. Neither the Craig bill nor the paper which ac¬
companied it, if left at the office ol ho \\ • > ■
Union Company, at the lime and
asserted, nor the alleged submission b, ’
Orton, and afterward, at the instance I W
to (lie counsel of Unit coin pa n\ , ol u 1 * 1 • * ^
ing Edison’s interest in wllh Plvs.
mice made by Sewell, m » mine ..
cott, to the fact Hint there was a coni . , .
between Edison and Harrington, is i s . .
my judgmonl locharget He ; e e mb r J ^
r i
at the time specilied by buitii. - ■
that such a conversation ocuniul, i
s under the
eireiiuistunuts it well might, in 1875. Sorrell thinks
it was Burlier, but his testimony is vague and un¬
certain. The remark was a casual one, and his rea¬
son for assigning to it the date that ho does is that
he “ cannot place it at any oilier time.” “ Q. (by
Counsel for plaintfiT.) “ You tlo not place it very
well, at this lime.” '* Alls. “ It was so casual that
it is impossible for mo to plaou it more distinctly
than I have.” Hut Mr. Prescott swears positively,
that, until 187(5, he had no knowledge, notice, in¬
formation, or suggestion or any kind, of the exist¬
ence of the Ifarrington contracts, or either ttf them.
1 so Had the fact to lie.
Indeed, upon all the evidence, I must hold;./f/'.v/,
that the title of the defendants, Prescott and the
Western Union Company, was acquired without no¬
tice or knowledge, on the part, of either of them, of
the claims of the plaintiff or its assignors, under the
two contracts or October 1 , 1870, and April •!, 1871,
or even of the existence of such contracts, or either
of them; second, that tv hen the defendants became
interested in the inventions now in controversy, the
agreement of October], 1870, had ceased to be opera¬
tive and effective fornny purpose, except, in so far
as its termsand provisions were incorporated in and
imulilied by that of April -I, 1871 ; third, that, the
agreement of April 4, 1871, includes only such in¬
ventions as are applicable to automatic telegraphy,
as above described and defined, or to mechanical
printers ; fourth, that the inventions now ill con¬
troversy are not, nor can they lie made, in any just
sense, applicable either to automatic telegraphy, or
to mechanical printers.
l am further of opinion that t ho circumstances
under which I lie double title, claimed bv rile plain¬
tiffs to have been derived by them from Ifarrington
and Edison, respectively, passed under the control
a. Affidavits and Injunction Order. February 21, 1877. 18 pages,
b. Summons and Complaint. February 21, 1877. 253 pages.
3. In the Patent Office. In the matter of Harrington and Edison v.
Prescott. Argument on Behalf of Edison. 1875. 34 pages. Two copies.
Not filmed. Another copy filmed in Quadruplex Case Volume 72.
Atlantic and Pacific Telegraph Company v. George B. Prescott.
Edison. Superior Court of the City of New York. 1876.
Answer of Thomas A. Edison. 13 pages. Not filmed. Another copy
filmed in Quadruplex Case Volume 70.
7. Thomas A. Edison and -
Telegraph Com;:
the Interior. Supreme Court of the District of Columbia. 1876.
a. Bill of Complaint. 38 pages. Not filmed. This document
appears as Exhibit 17 in 2.b above.
b. Brief on Behalf of Complainants. 28 pages.
[TLC Contents, p. 2]
a8- o .Be^.the Honorable Secretary of the Interior. In the matter of the
£ utSOnM Harrington from the decision of the Commissioner of
Patents of March 20, 1875, to the Secretary of the Interior. Reply of
counsel for Mr. George B. Prescott to the respective briefs of B.F. Butler,
rn.m’tC|)fnSeijf0ruEdl“n’ and John H.B. Latrobe and Leonard Myers, Esqs.,
counsel for Mr. Harrington. 42 pages. M 9
R9, Pr Western Union Telegraph Company v. Thomas A, Edison and George
B. Prescott. In Chancery of New Jersey. " ‘ - -
Bill of Complaint and Injunction. January 28, 1875. 25 pages.
3|- ' 1 PacificTelegraph Company v. George B. Prescott and
iurk ?aVb Te egraph c°mPanv. Superior Court of the City of New
Argument of Grosvenor P. Lowrey. Not filmed. Another copy
filmed in Quadruplex Case Volume 73.
Superior (Court,
OF TIIIC OJTY OF NEW VOHK.
/* faiHti])' i
. Kij
W
I
UTi.i.ia.m
!. W \ 1: i .. :i in I Hhiihut \
. i ri im ,\ii <• Ttxn
OoUIUNY. I
Ai'to.matii- Tki.wii
;i mi Oki.iimc II. I’l:
sni.l
II On
< 'Hi/ • mil ( 'mi ill;/ »f ) »fk i w
Wll.I.IAM OUTl'N. s
1 I 'im til" President uf til" Weston. Union 4
Ti'li'itrutili Comimny. end litre.; imrl, (mm ’U«5 '»'■
"inning. iNim.mil « I. n'ff »f «.■ -I- «HiW '» twuen tlm
plaintiff und Edison, in respect to llis inventions in-
■6 volvudin this notion ami «»f all matters relating to or
connected therewith. The complaint in tins action
was drawn under my instructions and 1 am familial
with its contents.
3. AH tile matters alleged in the second article
of the complaint, are true to my own knowledge,
and as to all of them which are not there stated to
have taken place between Kdison and Prescott, or
between either <>f them, and others than inyseu,
o such knowledge wns derived from my personal
participation in such matters: and as to the matters
alleged in mid article; which at lirst took place be¬
tween Kdison and Prescott in connection with their
agreements together, or between either of them and
the workmen operators or other employees of the
plaintiff, these mutters were, about the times they
took place, eominumcaied to me by Kdison and
Prescott,
S. All the matters of fact alleged in the third nr-
7 ji,,],, tnie to my own knowledge ; and all the
agreements therein referred to were made with
knowledge on my part, and 1 am advised by the
counsel ot the phiiiu ill. and 1 believe it to he true,
that in virtue of said matters of fact and agree¬
ments, the plaintiff is the owner of and legally en¬
titled to all the inventions and Letters Patent in said
third article referred to.
4. The facts alleged in the fourth article or the
8 complaint, and in the third paragraph of the llfth
article, were communicated to me hy tin; defendant
Edison, mid 1 believe nil the allegations of the
fourth article and of the third paragraph iff the lirtli
article to bo true.
fi. The allegations iff the fifth article of the com¬
plaint, except those of the third paragraph thereof,
are made upon information derived by me from
copies of the instruments there referred to, of record
in the United States Patent Oliiee, or pleaded in
soihe of the actions pending against this plaintiff, as
set forth in Exhibits Hi, 17 and J8; and upon. such p
information 1 believe all such allegations of the fifth
article lo he i rue’,
(I. Tin- allegations of the first paragraph of the
sixth arliete are made upon the smile information
given to me by Kdison, which is referred to in the
fouiih paragraph . . . and the allegations of the
second paragraph of the sixth article are made
partly upon the same information mid grounds of
belief which are more fully stated in the eighth par¬
agraph hereof : mid us to the rest, upon my own 1
knowledge ; mid upon such knowledge mid infornm-
lion I ladles’ll nil the allegations of said sixth article
lo he true.
7. The a I legations of the seventh article of the
complaint me bused upon knowledge mid informa¬
tion derived from copies of records of the pa¬
pers and proceedings there referred to in the United
States Patent Office, Amt upon those grounds i be¬
lieve said allegations lo lie true. The allegations of 11
file eighth article of the complete me true to my
own knowledge, derived from papers and proceed¬
ings in the ease there referred to.
S. The allegations of the ninth article, as to the
interests claimed by Harrington and Hoi II mid his
co-trustees, are made upon information derived by
me from the complaint mid bills in the suits against
the plaintiff mentioned lit the eighth article and in
the lirst mid second paragraphs of the twelfth article 12
of the complaint, mid from a copy of the instru¬
ment of May 2, IS70, referred to in folio f>2, which
is on record in the United States Patent Office.
The allegations of the lust paragraph of the ninth
article are made partly upon information given
lo me by Kdison to the effect that the agree¬
ment of October 1, 1870. and tbe relations be¬
tween Harrington and himself created thereby, had
been abrogated and annulled long before the year
1873, and that neither of said agreements of Opto-
tioas in duplex or qiiiulru ])li->c tidcgmjihy referred
to in till! third article of tin1 if* »in | il:iint ; ami dial
Harrington laid not, by- virtue of i*.illnT of said
agreements id' October I, 1870, nr April -I. 1871,
any rigid, til If nr interest, nr any power In dis-
2)080, on behalf id' said Edison. id' any rigid, lilt)* or
interest. in any of said inventions. Furthermore,
I Jm vt* 1)1*1*11 inl'mnn'd l»y expert i*li*i*irii*ians who
4 an.* thoroughly familiar with all considerable telegra¬
phic Inventions and systems which have lii.*i*ii unido
or list'd' during tin* last u-n yuars and upwards,
and especially with llinsi* known as, nr prilaUiing
to, tint aulomatii; or ida*inii*al nr fast systems nf toll*,
grnpliy, a nil, among l lmse ox per Is, by MososO. Farmer
and Frank I,, Pope, that they lain* tlnirniiglily ex-
lUliint'd hot It nf said inslritliiiinls nf October 1. 1871),
and April -I, 1871, ami that tin provisions nr levins
of oitliol of llii'in cmer nr roiitomplatc tin* said
Ifi Edison’s invnntinns in duplex m* quadruple* tele¬
graphy, roforivd to in tin; third article nf tin*
complaint. I liavi* lji*i*n also advised. as mat-
tor of law. iiy tin* i*nunsi*l in tin* plaintilf. that
neither id' said instranionls nf jtlelolicr I, 1870.
or April *1, 1871, conveys any right, tit li* nr interest
whatever, in any of tin* invnntinns dosi'riliod in
said third tirlii'lo, nor any power or authority on be¬
half or said Kdisnn, to convoy or dispose or any
interest in the same inventions, and that neither the
10 defendant Oimfd. the Atlaiilieand Pnritic Telegraph
Coni]iany, nor said IteilV and his no- trustees,
did, through any ol' the .Instruments, purporting to
be made by Harrington and referred to in tin*, lift It
article of the complaint, or under either of said in¬
struments of October 1, 1870, *or of April *1, 1871,
acquire any right, title or interest whatever in any
of, said inventions described in the third article of
, the complaint. And upon the information so do-
."""i -ns nimie ro me t.y the defendant
r it 'bore stated, and from examination
1 . . . . "Iiiiesillieu, ami iron
oT tin* bills of Jiarringlon and Edison m Hie suits
"'f'-rre'l hi said tenth article, and in their suit
tWiinst this pluiiiiill' ami Presmtt referred to in the
l1"1''1 . . -I' twelfth article ; and from the
ndormalion so derived, I believe all the allegations
of said tenth article to he true.
I». The allegations nf the eleventh article, in folios 18
, !"'(1 !".'•»* fo 'bo making of the invention
described in (fuse 11, are based upon memornnda of
bis inventions furnished to the plaintiifbv Edison ;
ami the allegations as lo Edison’s acts in ‘respect to
said invention, and la's securing the issue of the
patent No. Ki'i.tititi. asset forth in loltos (It) and 01,
are made upon information derived from copies of
. . . . i" Ha* Knifed States Patou* Oilice of tile
]>apet*s ami proceedings there referred to. As to
the representations and agreements of Edison, in re- i»
Sjiecf to the said invention described in Case II, and'
Case No. at), these were made in part to me bv Ed¬
ison, ami those nf them which wen . . by him to
I’rescott Were • ■ ni in ii a ii *.*i t ei I by Prescott to me.
All the allegations of fraud in respect to said Cases
H and !)(), as set forth in folios 02 to. 04, are
made upon my knowledge of the matters stated in
tin; second article of the complaint and upon com¬
munications made to me by Prescott. The allega¬
tions of the last paragraph of 'the eleventh article 20
are made upon information given tome by the de- ”
fondant Hoi If to thu effect there stated. And upon
such knowledge and belief aforesaid, 1 believe till
the allegations of the eleventh article fo lie true.
11. The allegations of the twelfth article are made
iiiion information derived by me from the pleadings
in the several suits there referred to, and upon
such information I believe nil the allocations of said
lit. As to ill] tlu> other matters alleged in sniil
fourteenth article, find ns to the alienations of the
fifteenth article, I Itnvi* stntoil to . . . of tin*
plaintiff tin* whole nisu in this action. nmi Imvi* sub¬
mitted to fliom all tin* matters of tori s<*t foi-tfi in tin*
i'oni])hiiiil. nmi tijion Mirli siafoiui’iil mnl siiliinissioii
I hn vi • been advised by tin-in, ns is alleged in sniil ///v*
fifteenth article, mnl upon such advice by tlioni 1
bulfuvi* nil sniil matters of tin* foiifli.'i*nlli article nmi
ill tlm allegations of the fifteenth :ii*tii*1<* to In.* true.
fc>UI EU10R COURT OF THE CITY OF NEW
YORK.
Guniuu: IIaiiihxuton, Thomas A.
Edison, The Atlantic and Pacific
Tui.mitiAi'ii Uomi'anv, Jav Gould,
Sa.mdhi, if. Mills, mnl Josiaii C.
IlittFF, Thomas A. Edison, Wir.- ■
mam M. Skvfkiit, William J.
Pai.m nil, IIkxiiv L. Dai.i.utt, Jr.,
AiiiiitsTiis II. Waud, mnl Riiiikht
W . Hiissi:i.l. ns Trusti'os of the
AMunif'AN Automatic Tisi.kihiafii
Com i* any, tin* sniil Amhihcan
AUTOMATIC T 151, KllltA 1*11 COMfANV
mid (iKoliOIC li. PltttSt'O'IT,
Defendantx.
Fiiank L Pont:, being duly sworn, says :
l reside in flu* City of Elizabeth, in the* Statu of
Nuw Jersey, anil mu by profession an Electrician
anil Telegraphic mnl Electrical Engineer, and this lias
been my profession for the fast twelve veins and'
upwards; mid during this period 1 have been editor
of journals devoted especially to Telegraphy, and
have written several works on the same subject.
I am liimilinr with all the inventions and improve¬
ments in electrical and telegraphic science, and
witli all of them of any moment which relate es¬
pecially to telegraphy, which have been made pub¬
lic as well in Europe as in this country, during
the period last named. During the same period I
attention to in vent iotts Milling to Duplex mid
Qundrnplex Telegraphy.
f Itiivi- rend the complaint in this action. mid tin-
llerstmid I III- inventions described ill t lie several lip
plications and letters patent referred to in the
third and eleventh articles thereof and have thor¬
oughly examined tile papers pertaining to these
10 applications and patents. With particular ref¬
erence to this aiiidavit, I have especially ex¬
amined the applications dated or tiled about April
2(t and .May ‘J-J, 187:). and March IS. IK'o. and the
Letters Patent. No. KtS.ttitH. all of them connected
with f lic case designated as 1 1." ami have also
especially examined the application dated August
1!), .1 874, in tile case designated as Case No. its), and
also tlie drawings accompanying each of these ap¬
plications and letters patent, all as set forth in
1 Exhibits 7 ami hi. annexed to the complaint.
The invention pntented in No. |(,.-j,(i:i:t is in its
essential snhstmire the same invention wliieh is de¬
scribed in I he application in Cn-e tut. The invention
ill each of these two discs consists in a method of
transmitting two imlopoiidonl signal- or cnmimini-
cationsal the same time anti over the same wire,
either in opposite directions or in the same diree-
tion.
With reference to thelirst twonpplienlions, those
2 of April ami May, I87H, the prelimimirv reeitnls in
eneli, which slate the objector the inven'iioiinre.siib-
.stmilinllv alike, lint lliev an. I, ...l, is.,.;.... .
siiiinllmieons tram
ill t|le order of ti
August S»th, 187-1,
one/whosu object w
for siinultmieoiif
mils over (lie sa
In other words tl
eases II am) 1)11, ii
application of Mn
staled, tlie distiin
face, of tlie appliei
The application
to the imrodnetio
despatches or signals, over the same line wire from
o]))K»>ltu directions. or in tin- sumodireetion. and tin*
invention consists in t In* l m nsinission of positive
mill negative currents over I lit- lino lo clfect the
reecpl ion of ono message mul the increase and de¬
crease of the strength of l hose currents, dither
positive or negative, to effect the rooeplion of the
other message." These two objects, so stated, are
absolutely identical.
The •‘reversal of a battery etirrent " in the lan¬
guage of case 0!) is exactly t lie same thing as "tin:
transmission of positive and negative currents over
the lines,” in the language of the' patent, 102.1133 :
tin; farther language describing the operation in tin'
two cases is almost exactly the Same, to wit : in case
Ot), it is “by increasing and decreasing the strength
of the current in the other instance and in patent
102,083 it is “by increase or decrease of the
strengths of these currents, either positive or nega¬
tive, to ellent the reception of the other message."
As to tlie claims in case No. (Ilf— tin1 second claim,
by the words, •• the polarized magnet which responds
to change of polarity,” describes the same thing, as
“a receiving instrument operated by changes in po¬
larity of tlie current,” in the language ot the third
claim of patent 102,033. So, also, “an ordinary mag¬
net, which responds to an increase and decrease of
the current,” in the words of tlie second claim of
case 09,. is a description of precisely the same thing
as “a receiving instrument operated by changes
of tension,” in the words of the third claim of natent
ot orner tilings ; Ijut those are all snbsid
cidentnl to the substantial invention, nil
matters of detail relating to (lie elfectaa
of it in practice.
Apart from what: I. have described in tl
as the substantial invention in these two
severed from it, tlm other tilings meati
specifications in the two cases are of no '
Sworn to before me, this t
2 /"Hay of February, 1877. |
tLo-Ojfc L/L /'Aajviaj
nZ/. Co.
a
SUPERIOR COURT OP THE CITY OP NEW
YORK.
Tim Westuiin Union- Ti:i,i:i:I!ahi
COMPANY,
Plaintiff.
ayaiiixf
Uuoitou IIaimiixoton, Thomas A.
Edison, Thk-Ati-antic and I’a-
oii'ic Tui.kiiiiai'H Comdanv. Jay
(lOIII.D, Samuici. M. Mii.i.s, mill
.Iosiaii C. Huiit, Thomas K. Edi¬
son, Wim.iam M Srvn:i!i, Win-
MAM .1. Pai.mkii. JIkniiv L. 'Dai.-
M5TT, Jr., Atdi si rs B. W.iitn, :mil
Roiihii'I' W. Husski.i., iis Trustees
of the Amuiiioan A t-rc i.m ATIt- Ti:i.i:-
OKA I’ll (Jo.MDANY, Mil! Said A.MHItl-
can Automatic Tui.houai’ii Com¬
pany, mid Cthoiiou H. Piiuscott.
Dtfrntluitls.
City and County of N/ur Tort, ss : I !
koiiok B. Piiuscott, being duly sworn; says : j
1 reside in the City of Nmv York, and am by pro¬
fession an electrician. I am Hie electrician of the j
Western Union Telegraph Company, and nssueli have ' :
charge of all matters of a scientific or technical char¬
acter relating to the service of its lines and appara-
tus ; I am also the author of works upon Electricity
and Telegraphy and have been familiar with electric :
and telegraphic science for the last tit) years. ;
l am entirely familiar with all the inventions >
which have been made public in Europe or in this
country during tile last twenty years- relatimr to *
Duplex or Qnadrnplox Telegraphy. I have read the
complaint in this action, and I understand the in¬
ventions described in tin) applications for lotturs
patent referred to in the third and eleventh articles
thereof.
1 am thoroughly liimiliar with the applications of
April and May. IH7:t. and March, I S7o, and the
betters Patent I iy, 011:1, pertaining to Case II, and the
application dated August tilth, IS7-I, in Case (It),
and with the drawings accompanying all of these
applications and betters Patent 10a,(JS!l, as shown
in Exhibits 7 and \6.
Tlie invention shown in Patent No. MIS.OHB and in
theapplicalion O', is thesame invention, and consists
in a eombinalioii of a receiving instrument operated
by changes in the direction of tin* current sent from
the transmission station, independent of the quantity
of tlie current sent from the .transmission station,
with another receiving instrument which operates
by changes in the quantity of current, independent
of its direction.
Previous to lids invention l Imre had been invent¬
ed various Iliads of Duplex Telegraphs, but none of
the . ployed tlm parliefliiay combination above de¬
scribed. and which is shown, described and claimed
both in Patent l(ig.(Kf:i and in Case 111) This
combination of tire polarized relay, which is
worked by change of direction, irrespective of
tlm strength of the current, with tin- ordinary
Morse or neutral relay which is worked by changes
ill strength of tlie current, independent ol tile polar¬
ity or direction of file current, are shown in the
drawings in Case lit) and Patent 1(12, OH!). In the lat¬
ter case the neutral relay, which is operated by in¬
crease and decrease of current, is constructed with
two sets of coils designated in drawings A and B.
In tlie specification of Patent 102, OHS, it is stated
that tlie relay A, B, may also be placed at a num¬
ber of stations, if A or B. be dispensed with, and
other devices applied to prevent tlie mutilation of
the signals bv chance in the polarity- of its iron core.
rl"-“ -Vllnnrj,. ,-iml I’iicilii' Telcginph
.ViifrniiKsi iliis plninriir. and hciunel \\\ s..|--
T", I*- mid Thomas A. ICdison
in tin.' Superior Court of I In; (,r Noav
l,"vs'"l "I Ueoigolhirriuglun mid Thomas
"• "»»'"«■ HiisphuntilVmid others. pending
'l"1''"'' <-»nrr of Hie Iti^ui. r of Columbia.
I •"* •-"» oril.esud Ilm-riiiifioM ami
rv'-rf!"1' . . i,.i.«ii„j
-",m ,,r I'llil.'d .Sillies for nZ
!!j' " iou l,,; ! '"'".""'"ioiier i'r' I ‘men is, o',-
•lies / . ,-1 Hopni (nienl of l!„.
■"•‘•s, .In,, issue and deliverv of „„v lei •
!'•> ’I’lioiuns a. Kins,,,; mid
i • mid rl- "'1 1!l’il,V',(l rl"‘ '•"Ii'l'liiim in
, li i >1 sind last mimed officer*;
. " '".'uif-' m miy 'vi i y lo iin v of ti,.. ....
t,xrv?,is|" . . .
ssueof i ''“"iplninl ineiilioiled,
"i‘.v of f'lie said n ppl icmioi,s.
Hours, agcis mi< . n,e,r ,v-
-^,•..1, fr„, ,i aHsig,iiI1&
withdrawing, "I'Vw or otherwise £&£&«gi]
nny wny any onB applications lor any pnten
for stud inventions wTneh were pending in tin
United suites J'llleut . . . the 1st dll'v of l)e
eemlier, IS7-1.
Th ltd. —That the dofendmit Kdison. Iii.s agents
iittorneys mid semtnts, refrain hencefortli I'ron
selling, assigning, alienating, enemnhering or dispos
ing in any way, exrept to or lor the benefit of tlu
plaintiff, of said Letters l’atent, Nos. 1(12, OH!) ant
I(l8,:)8n, or of any letters patent which have here
tofore been or may hereafter he granted to him foi
any of llie inventions described in tile first clause oi
this order, or in Hie third article of the complaint,
and from giving, or making any instrument or doing
any act purporting to give, any right, title or interest
in any of the letters patent or inventions aforesaid,
or any license or right to use any of them.
J fourth. — That the defendants, tile Atlantic and
1‘acilie Telegraph Company and Harrington and
ISdison, and each of them, and llteir respective offi¬
cers. agents, attorneys and servants, refrain hence¬
forth from further prosecuting or proceeding in any
respect, in their respective suits described in the
lirst clause of this order.
And I do further order that tile defendants and
each of them show cause on the said complaint' and
affidavits, and such other affidavits as may be served
ami lins ils principal ollico in the city of Now York. The
defendant, the Atlantic and Pacific Telegraph Company, is
also a corporation created by and existing under the laws of
tlie snmo State for a similar purpose, and with like powers, 7
and having its principal oilice in the city of New York.
Second. — About the month of February, 1873, the plain¬
tiff, being thou the ownor of a now invention, and of letters
patent thorofor, known ns Stearns' system of duplex tolo-
graphy, and being desirous of improving tho Stearns and
other duplex and other modes of multiple transmission
of electric signals for telegraphing, and the defend¬
ant Edison, who was an electrician and inventor, having
represented to it that he liml already mndo cortnin inventions
in duplox telegraphy, which lie would sell to tho plaintiff, 8
and having proposed to it to undertake experiments for tho
purpose aforesaid, entered into an agreement with said
Edison, whereby, on his part, ho agreed to begin forth¬
with and proseouto experiments for tho improvement of
duplox and other modes of such multiplo transmission, and
for making discoveries of now methods of such transmission,
for the cxclusivo benefit and use of the plaintiff; and on its
part, tho plaintiff agreed to furnish to Edison facilities and
material for the prosecution of such experiments, and tho
development for practical uso in Us business, of all Ids 0
discoveries and inventions which should result therefrom ;
and it was, at tho same time, further agreed by botli said
parties Unit all Edison’s said inventions in duplox or cpmd-. '
ruplcx telegraphy, already made by him as aforesaid, should
belong to tlie plaintiff, and that all such further experiments
mid discoveries and all tlie improvements and inventions
which should result therefrom, and especially all of those
which related to duplox or other modos of multiplo trans¬
mission, should be mndo for the plaintiff and not for said
Edison ; that all such improvements and inventions should, 10
upon tlie making thereof, be the property of the plaintiff
exclusively, and that whatever loiters patent for any of his
aforesaid inventions and improvements tlie said Edison
""('useful in such busmessTTind including tho inventions mid]
Ipateuts hereinafter mentioned; and the plaintiff is now and)
ing tin; months of September «ml October, LS7-1-, machines
embodying the said inventions, and iiartienlarly the quadrii-
plox, mid the improvements described in application No. '.Ill,
and in said patent No. 102,033, were constructed at plain-
till’s expense upon Edison’s drawings and under his direc¬
tion, and in accordance with and in performance of his said
agreement with tins plniuiill’, and were pul into operation as
its property upon its lines, and for practical use in its ordi¬
nary business, ami with the full knowledge, consent and as¬
sistance of llm said .Edison and Prescott, and so Imvo re¬
mained ever since; ami this use by plaintill' of such inven¬
tions of Edison, and its ownership of them, were at or about
the said dates publicly anuouueud, and were then well
known, especially to all persons interested in telegraphic
business and science, and plaintill' says, upon its information
and belief, that they were then known to the defendants,
Gould, the Atlantic and Pacific Telegraph Company, and
Harrington aud.lieill' and others of his co-trustees.
The experiments of said parties being continued from
the dates last named, throueh the year 187 J, on or about
marked Exhibit 2.
And in tho early part of January, 1875, tho defendant
Presootl requested the payment to him, also, of a like sun
of $5,000, and on account and in part payment of the
price thereafter to ho agreed upon bclwien tho said pnrtioi
as aforesaid ; and accordingly, and in virtue of the said
agreements between this plaintill' and Edison, and Pres
eott's interest therein, and of the agreements of Edison
and Prescott with it, this plaintill' on tho sixteenth day o:
January, 1875, paid to Prescott a like sum of $6,000, which
ho nlso accepted as such part payment, and thereupon
executed, under his hand and seal, and delivered to the
plaintiff a pnper, a copy whereof is hereto annexed, and
nindo part hereof, marked Exhibit 3.
On or about the 10th day of December, 1874, tho innttci
of the definite price to be paid for the inventions and 'letters
patent aforesaid, having been in continued negotiation and
discussion between tho parties, the said defendants Edison
and Prescott submitted to the plaintill' a proposition in
writing, signed by each of them, a copy whereof is hereto
tho 10th day of December of that year the said Edison,
in view of' the inventions already made, and some of which
Imd been already put into the possession and practical use of
tho plaintill', as aforesaid ; and in virtue of his agreement
iforcsaid with the plniuiill', and upon the claim that lie and
tho said Prescott were rapidly developing still further ini-
movements and inventions in connection with duplex and
pmdruplex telegraphy, which they would soon furnish to
dnintifl' for practical use in its business, asked of the plain-
ill’ an advance on tho price due, or to become due, from
annexed, and made part hereof, marked Exhibit 4; am
tho same matter of the price still continuing in trontj
botweon said parties, and tho mode of paying tho price
to wit, part by oasli and part by royalties, having boot
substantially sottlcd by lliom, and ns to tho amount of thosi
payments, the parties having gradually conic nearer to cacl
other, so that they did not substantially dillcr m tliii
respect, on or about tho 80th day of December, 1874, tin
Bnid Edison and Prescott submitted to tho plaintill' a furlhoi
proposition in writing, a copy whereof is hereto annexed
and nindu nnrt hereof, marked Exhibit 5.
mbor SOtli, 1874, ami oil the 20th day of January, 1870,
>tificd Edison and Prescott of its acceptance of dint proposi-
in, by delivery to each of them of a paper, whereof a copy
hereto annexed and made part hereof, marked Exhibit 0.
On tho said 20th day of January, 1875, the defendant P res¬
it notified plnintilV ol Ins readiness to join in a formal
signineiil to it of all said inventions and letters patent
erelbr, relating to duplex and ipuidruplex telegraphs, and
eluding the inventions described iti said agreement ol
ugiist 11), 1874, and has always since that time been
id now is willing to join in all necessary assignments
id instruments to vest in tho plnintilV nil his and Edison’s
I orest in till of the said inventions and letters patent.
But tho defendant Edison then refused to make, or to join
ilh l’l'eseott in. nnv assignment to this plainlilf, and
inlared that he would not convoy to it any interest in said
volitions or patents lor any sum whatever; and though
o | htinlilV was ready, and sought to tender to Edison the
niuiituler of tho money consideration due him under his
iceptcd oiler, and to tender himaprnperagreement to. secure
him also tho royalty which it provided, all its elibrts
ere defeated by said Edison's absenting and concealing
mself. lor the purpose of preventing any such or olhor
ndcr'boing Hindu to him by the plainlilf.
On the 28th day of January, 1875, tho defendant Edison,
tying ever since the 20th day of January kept himself so
meenled, this plaintiff demanded of Prescott such convey-
tee us aforesaid to it of tho interests agreed to be eon-
eyed to it by said Prescott mid Edison, and then tendered
i him the money stipulated for by the oiler of December
3, and oll'ercd to execute a proper agreement securing
Tho plnintilV is still ready and hereby oilers to pay to
snid Edison and Prescott whatever of tho consideration
stated in snid acceptance of January 20, 1876, is still duo to
them or cither of them.
Third. — By virtuo of plnintilV'snforosnid agreements with
Edison, and with Edison and Prescott, it is tho owner of,
and is legally entitled to all tho inventions and improve¬
ments mentioned in the applications numbered ninety-four
to otto hundred, belli inclusive, referred to in tho agreement
of August 10, 1874, and of all other improvements in duplex
telegraphy, tho description of which, before that agreement,
had been, lodged with George M. Phelps, for tho purposo of
constructing models ihorcof, and among these latter aro tho
inventions described in tho applications numbered 111, 112,
nnd 118, and tho letters Patent granted to Edison for the
invention described in said application numbered 111,
being letters patent of the United Stales No. 168,885, dated
October 5, 1876, and also nil oilier sttelt inventions nnd
improvements which were included in the agreement of
August 19, 1874, ns therein recited ; and is entitled to Letters
Patent of the United States for all the aforesaid inventions
nnd improvements. Tito plaintill is, also, by virtue of tho
matters set forth in the second article hereof, in like manner
legally entitled to the invention nnd improvement in duplex
telegraphs, and to the Letters Patent of tho United Slates
therefor, which is described in and covered by such Loiters
Patent, numbered 182,088, dated April 27, 1875, hereinafter
again referred to. Copies of said several applications are
hereto annexed and nuido part hurcof as Exhibit 7.
Fourth. — During the latter part of December, 1874, the
defendant. Juv Gottid — who was then, and for a loin- dine
stockholder ami a director of the said Atlantic and Pacifio
Telegraph Company, and in control of its business and
policy — in the interest of said company, and conspiring with
it, and with Thomas T. Eckert and other persons, for the
purpose of defrauding the plaint; If of the improvements and
inventions in duplex and rpnulruplcx telegraphs, which are
56 more particularly designated in the third arlicle hereof, and
of depriving plaintilf of the benefit thereof in its business,
and of securing the same to the said Atlantic and Pacific
Telogrnph Company, and with full knowledge on the part
of all said parties of all the matters hereinbefore set forth,
did induce said Edison, as he therefore did, ns set forth in
tho second article, to break oil' all relations with tho plaintiff
and Prescott, arising out of his said agreements with thorn,
and to repudiate and violate his agreements in respect to
said inventions with them respectively, ns aforesaid.
86 Fifth. — The defendants, Edison, Mills, Gotdd and tho
Atlnntie and Pacific Telegraph Company, claim tlint
afterwards the said Edison mndo and delivered to Gould an
instrument beating date of January 4, 1876, whereby he
purported to give to said Gould a power to assign, and dis¬
pose otherwise ns is more tally set forth thorcin, of tho in¬
ventions there described, being the snuto which already
belonged to the plaintilf under its agreement with him,
as hereinbefore set forth; of which instrument a copy is
hereto annexed and made part hereof, and marked Exhibit 8,
which instrument is recorded in the Patent Ollico, under
37 date of January 6, lS7o, in Ifilior 11, 18, p. -100, of Tmnsfurs
of Patents ; and the said Gould and Mills also claim that
afterwards said Gould, ill virtue of the last named instru¬
ment, and in the name of Edison, did make and deliver
to Samuel M. Milts the instrument bearing dale January (I,
1876, whereof a copy is hereto annexed and made part
hereof, and marked Exhibit !). mid recorded in the
Patent Ollico on the 1.0th day of April, 1875, in Liber Y,
18, p. 848, of Transfers of Patents, and that thereby said
Mills became the owner of thu same inventions, and entitled
38 to the same letters patent which are oliiiined by the plaintilf,
as set forth in the third article.
1 ho defendants Gould, Harrington, and tho Atlantic and
•t r Pacific Telegraph Company, further claim that on or about
the 1st day of January, 1876, Harrington rnmlo and deliv¬
ered to Gould the instrument hearing that dnte, whereof a
copy is hereunto annexed and made part hereof, markud
" Exhibit 10,” and afterwards an instrument bearing date of
Mutch 0, 1876, whereof a copy is hereto annexed and made
part hereof, and marked “ Exhibit 11," both of which instru¬
ments are recorded in the Patent Ollice, under ilato of March
81, 1876, in Lihor D, 1ft, pp. 100, 154, of Transfers of
Patents ; and that afterwards the said Gould made and tie-
>t f livored to tho Atlantic nntl Pacific Telegraph Company
tho instrument bearing date of July 11), 1875, whoreof a
copy is hereto annexed and uuulo part hereof, and marked
"Exhibit 12,’’ which instrument iscccorded in tho Patent
Ollice under tittle of April 11, 1876, in JJber. P. 20, p. 64
of Transfers of Patents, and the said Atlnntie and Paoiliu
■ Tolegrapb.Company claims that by virtue of tho instruments,
Exhibits 10 and 12, it is tho owner of tho same inventions,
ami entitled to tho same letters patent which are claimed by
' ■ this plaintilf as set forth in tho third article.
Tho plaintilf alleges that no such instrument as that fidsoly
purporting to linvo boon made on tho first day of January,
1876, tvns made on or about that day, and that it wns not
mndo or delivered, if at. all, till long nflor thu alleged dcod of
Edison to Gould, dated .limitary 4, 1875, nor, as plaintiff
is informed and believes, wns it made before tbo 26th day
of January, 1875.
It is claimed by Harrington and Edison tlint about tho
date last named, Edison addressed to the Commissioner of
v, Patents a letter purporting to revoke bis former application
on file in tlio Patent Ollico for letters patent to himself and
Prescott, and to request issue of such letters patent to him¬
self and Harrington ; and that about tbo same time the said
Harrington did also address to tho Commissioner of Pntonts
/ a letter making a similar request, respecting the issue of
( such patents, of which letters copies arc annexed to tho com-
\ plaint in tho ease of the Atlantic ami Pacific 'Holograph Com-
. puny against this plaintilf, as set forth in Exhibit 13.
Sixth.— The plaintifl’allcges that any <>£ sucli alleged instru-
neats referred to in tlio fiftli article which were made by said
•ospcctivo parties, were made in pursuance of conspire-
lies by the defendants, Gould and the Atlantic and I’aeific
Holograph Company and Kdison, or by tbe two lirst named
utd rrarrington, respectively, for the purpose and in execu¬
tion of tlio scheme in fraud of this phiiuiill', set forth in
the fourth article hereof, and with full knowledge by all of
said parties, at the limes of said several transaelions, of
nil tho matters set forth in the second and third articles
hereof.
And phiiuiill' further alleges that though thu defendant,
tlio Atlantic and Pacific Telegraph Company, claims in vir¬
tue of said instruments, Exhibit* 10 and 12, to be
owner of tho same inventions, and entitled to tho same let¬
ters patent claimed by this plaintilV, as sot forth in the third
articlo, yet that neither thu said Edison or Harrington could
or did convey, by any of said alleged instruments, nor could
or did said Atlantic and Pacific Telegraph Company aeipiiro
any such right, title, or interest as either of said alleged
instruments mentioned in tho fifth article liorool purport
to convoy or dispose of, nor any right, title or interest what
ever, ill any of said inventions or letters patunt, by or
under any of said alleged instruments.
Seventh.— In pursuance and execution of his agreement
with plniniill'aud Prescott, ns set forth in artielu second, thu
defendant Edison, oil or about the 1st day of September
1874, filed in thu United States Patent Ofiico the applica¬
tions numbered 04 to 100, both inclusive, for letters patent
for tho inventions therein described — ami the instrument of
August 10, 1874, being then of record in tlio palentollicc,
such letters patent should issue of right to said Edison ami
Prescott, jointly, as assignees of snid Edison ; and notwith¬
standing objection to issues to such patentees made by de¬
fendant, Harrington, to thu Commissioner, and of a claim by
him that patents for such inventions should be issued to
himself and Edison in virtue of his alleged agreement of
Anri 14, 1S71. with snid Kdison. and that neither Prescott
volitions or loiters patent therefor, tho said Commissioner
after full henring of the claims of Prescott, Harrington
and Edison, decided, on the 18th of March, 1S75, tliaUho
logal title in the inventions recited in or included by the
agreement of August ID, 1874, was in said Prescott and Edi¬
son, and that letters patent, granted for any of them, should
issue to said parties jointly. But though letters patent for tho
inventions described in thu applications numbered D4, !)5i
90 and 9S have been granted, no such letters patent
have been issued, because tlio taking of thorn and all fur¬
ther prosecution of any of said applications, and all dunmtid
of such patents for any of said inventions or improvements
were restrained by tho injunction in the suit of tho Atlantic
and Pacific Telegraph Company against Prescott and others
ponding in thu Superior Court of thu City of Now York,
and referred to in tho next article hereof.
Eighth.— On or about tho Ulh day of April, 1870, tho
defendant, tho Atlantic and Pacific Telegraph Company,
brought an action in the Suporior Court of the City of Now
York against this plaint ill' and Lemuel W. Sorrell and tho
defendants, Prescott and Edison, which suit, as plaintilV has
been informed and believes, was afterwards discontinued or
suspended ob to saiil Edison, without notico to tho other do-
fi i 1 it But this defendant and Prescott filed their answers
therein on or about the 18th day of May, 1870, niid said action
is now pending iti said court upon tho issues thereby made.
And on or about the 12th day of April, 187(1, upon the com¬
plaint and certain affidavits, said court issued its injunction
against all said defendants, restraining them ns therein set
forth, and said injunction still stands unmodified. Copies
of said complaint and answers, affidavits and injunction, arc
hereto annexed nml made part liorool, and marked Ex¬
hibit IS.
Ninth. — Tho plaintiff further alleges, upon its informa¬
tion and belief, that all tho right, title, and interest wliioh
tho defendant Harrington has claimed in or in respect to
any of the inventions or improvements covered by tho
its to life remaining two undivided thud pin ts, Ins own title,
ns trustee lot coilimi oilier persons trim constitute or repre¬
sent tlio slureln ilders ol' n joint stock nssoeiution, known us
the Amcricim Autoniutic Telegraph Company ; imt invested
witli the hg.d title ns to suuli two-thirds, and witli the
power of disposing, in Ids own mune, of that part of the in¬
ventions mid improvements aforesaid, and of disposing of the
other third ns the attorney in fact of Edison.
The right, title and interest so claimed by Harrington is
claimed by him in virtue of provisions of one or hoth ol two
instruments alleged by him to have been made, and to lie still
in force, between himself and I'ldison, one olTlium tinted April
■f, 1871, and recorded in the Patent Ollieo May (i, 1871,
and the other of them dated October 1, 1870, and icorded
in the Patent Ollieo .limitary 11, 1870, copies whereof are
hereto annexed and made part hereof as “ Exhibit 1-1," mid
of which instruments the plaintilf has no knowledge or
information except from their being died or recorded, as
aforesaid.
On or about the 2d day of May, 1S70, by an instrument of
three parts, dated tlmt day and recorded in the ollieo of Com¬
missioner (if Patents on the (Ith day of June, 187(1, in Liber
L, 20, p. -ISO, of Transfers of Patents, the said Harrington
did assign toJosiahC. Itcilfund tile other defumhmts herein
described ns trustees, all his right, title, and interest as such
trustee in and to said inventions, and transferred to them,
and substituted thorn in his stead, in all subsisting powers of
attorney held by him from said I'ldison in respect to said
inventions, the said Iieilf and others to hold all such as¬
signed rights, titles, and interests ns trustees, for the benefit
of said American Automatic Telegraph Company ami other¬
wise, ns is fully set forth in said instrument, a copy whereof
is hereto annexed and made part hereof, and marked “ Ex¬
hibit 15 and that in virtun of sniil insi,-n,.,n.o il.«
in virtue of either of said instruments of October 1, 1870, <
April 4, 1871, any right, title or interest whatever in any i
the inventions described in the third article hereof, nor an
power or authority on behalf of said Edison to convoy (
dispose of any interest in tho same; nor did the Alluut
and Pacific Telegraph Company, or said Uei(V ami other
trustees, acquire through any of tho instruments mado l)
Harrington, in Ids own nnmo'or as attorney of Edison, wltic
tiro roforred to in the fiflli or in this article, any right, tit
or interest whatever in any of the inventions referred to i
said third article hereof.
Tenth. — The plaint! IV further alleges, on its infornmtiu
and belief, that tiic defendant Harrington and the detenu
ants IloilVnnd others, trustees, deny that either the Admit
ami Piieifm Telegraph Company or Gould, on tho one hum
or this plaintilV or Prescott, on tho other, have any righ
title, or interest in any of the inventions or letters patei
described lit the third article hereof, hut allege that the sol
title and exclusive right of use of all of thorn is still in Ed
son and Harrington, or the said Hoi IV and others, trustees, i
virtuc of said instrument of May 2, 187(1. And tho sain
defendants deny that by his alleged instruments of Jnntuir
4th nnd .lilnuiiry 0th, 1875, to Gould ami Mills respectively
the defendant Edison conveyed any title in tho inventior
therein referred to, or anything else than his sliaru of til
proceeds of such title, which they allego Harrington lm
iilono tho power to convey.
And as the plaintilf is informed nnd believes, on or nbot
the 17tli day of May, 1871), the said Harrington, tnakiti
Edison his co-complainant, filed a bill in a suit still pent
ing in tho Circuit Court of tho United States for tli
Southern District of Now York against tho Atlantic an
Pacific Telegraph Company and Jay' Gould, wherein tho
10 t '
allego tlint the said company is using, and claims tho legal
title and tho right to use tho inventions of Edison in duplex •& |
and quadruplex telegraphy — being the same inventions
58 claimed by this pliiiutilV, and inoluding that covered by
said loiters patent, No. 102,083 — in virtue of the alleged . '
instruments made by Harrington to Gould, and dated Jan¬
uary 1 and March 9, 1876 ; but that for the grounds alleged
in said bill stud instruments wero void and inoperative,
and that saiil defendants, and neither of them, have any
legal or equitable title to saiil inventions or letters patent, <;*»
or any of them, or any right to use any of them ; and the
bill prays for a decree that neither of tho defendants therein
have any right or title to any of said inventions of Edison,
69 ""‘1 Hint said instruments, dated January 1st and March 9th, ; ■
bo declared inoperative and of no legal elleat, and that tho
defendant Gould and his assigns transfer or release to coni- ■
plainants whatever title or ulaims to said inventions they
may have under said instruments of January 1st or March
9th, 1876.
Eleventh — A short time previous to tho 2<lth day of April, % ,
1878, and, ns phtintifl is informed and bulieves, between that
date and tho beginning of Ids experiments for the plaintilf, ^
80 about tho first of February, 1878, under his agreement with
it, as set forth in the second article, and in the course of
those experiments and in execution of thnt agreement, tho
defendant Edison, mado an invention or improvement in
duplex telegraphs, designated by him as Case H; and, on
said 2Ulh day ol April, 1878, made application for letters
patent of the United States therefor, and on or about tho
22d day of May, 1878, filed an amended application in pjnee J
of tho former, and thi 1 1 1 c t \ till pending at ‘tho
date of his agreement with Prescott, on tho 19th day of
01 August, 187-1 ; and, ollon before that agreement and up to
tho time of making it, Edison declared and represented to
the plaintill thnt tho said invention, and others of tho series
known ns Cases A to II, inclusive, for which patent* had been
applied for at or about the same date, were embraced in and
covered by tho inventions described in the agreement of
August 19, 1874, by the numbers 94 to 100, inclusive ; that
tho applications in these cases wore intended to and did super
sede those in Oases A to II, and thnt tho latter were aban¬
doned by him and would be withdrawn. The same invention
and improvement, known as Case H, was accordingly embod¬
ied in the case and application No. 99, referred to in thengree-
ment of August 19, 1874 ; and this last application was filed
by Edison in tho Patent Office, in execution of his agreements 62
aforesaid, on or about the 2d day of .September, 1874, and
has been ponding there over since. But in or about the
month of .March or April, 1876, without tho knowledge or
consent of either this phtintifl' or Prescott, and in violation
or his agreements with both of them and in fraud of their
rights, by tho device of a pretended revival and amendment
or his application in Case IT, of April or May, 1878, the
said Edison transferred to thnt ease the substance of the ap¬
plication numbered 99, and thereby asked for a patent for
tho same invention covered by and applied for in Case 99 ; 08
and, further, on or about the-24tii day of March, 1876, exe¬
cuted and there was filed in the Patent Office nil assignment
to himself and defendant, Harrington — in tho proportion of
one third to himself and two thirds to Harrington— of tho
whole title to said invention, and requested tho issue of lot-
tors patent to said parties accordingly: and by these wrong¬
ful contrivances, on or about the 27th day of April, 1876,
without the knowledge or consent of this plaintiff or of
Prescott, and in fraud of their rights, such letters wero so
issued to Harrington and Edison jointly, by the number 64
162,688, and the letters are still unassigned; and tho said
defendants Harrington and Edison claim t-> bo tho solo -
ownors of tho legal title thereof, and of the invention for
which they were granted,
But tho plaintiff is informed and believes thnt tho Atlan¬
tic and Pncifio 'Telegraph Company has by some means, and
against tho consent of the said Harrington and Edison, or t.
of either of them, possessed itself of the original letters
patent, and refuses, though required so to do, to surrender
them to them, or cither of them, but claims to bo itself tho
owner of them, or at least to have the equitable title to tho 65
same, in virtue of some or all tho instruments referred to in
the filth article.
8
Copies of tbe nforcsnid applications relating to Case H ami
of the letters pntont No. 162,633 arc hereto annexed and ./
made part thereof, and marked Exhibit 16.
Twel/lli. — Several suits relating to the subject of this
action, besides that mentioned in the eight article, have
been brought, and are still pending in several courts, to wit :
66 1. On or about the 26th day of January, 1876, this
plaintiff Hied its bill of complaint and injunction in the
Court of Chancery of New Jersey against the defendants
Edison and Prescott, wherein— alter alleging its agreements ; t
with Edison, and Edison and Prescott as is hereinbefore set '-*■
forth, and that said Edison was then threatening to convey to
other persons than the complainant his interest in the in¬
ventions and patents, covered by stud agreement, to which
the complainant was entitled — the complainant piaved that
both thedelendants might be decreed to join in conveyances
to it of all the inventions coveted by the applications mini-
67 bored ltd to 100 inclusive ; ami also all the improvements
in duplex telegraphs, the description ol which on or bcl'ord* . t \
tlie 19th of August, 187*1, hail been lodged with Cleorgc hi.
Phelps for tbe purpose of the construction of models there¬
of; and also all inventions and improvements in duplex or
qmidruplex telegraphy made or to he made by said defend¬
ants or either of them, or in which they were or might ut
any time he jointly interested by virtue of their said agree¬
ment of August 10, 187-1; and nil letters patent for an.v
or the inventions or improvements aforesaid; and as also
prayed by said bill, on or about said 2Stb day of January,
187-1, said Court of Chancery issued its injunction command- /
68 ing each of said defendants to refrain from conveying to any
oilier j.etson than stud complninnm any oi tl e alousaid in
volitions, improvements or letters patent. This injunction
was served oil both defendants on or about the 29th day
of January, 1876.
The answer ol the defendant Edison, his co-defendant not
answering, was filed on the 26th day of hi ay, 1876, ami re¬
plication thereto on or about the / day of June, 1866,
and the said suit is still pending upon the issues made by
said pleadings, and the said injunction therein still stands
unmodified.
2. On or about the 11th day of May, 1876, tho defend¬
ants, Edison and Harrington, filed their bill of complaint in
tlie Supremo Court of the District of Columbia, in Equity,
against this plnintill', tlie defendant Prescott, It. U. Dnell, 69
Commissioner of Patents, and Z. Chandler, Secretary of tho
Interior. On or about Juno IHh tho complainants filed a
petition Ibr nil order of publication of process, as to defend¬
ant Prescott, us a substitute for personal service, and this
petition is still pending; on or about Juno 21th tlie defend¬
ants. Ducll mill Cnunillor. filed pleas to tlie jurisdiction of
the Court, which lire still pending, and on or about July 11
this plaintiir appuarod specially for tlie purpose only of a
motion to dismiss tho hill, its to itself, for want of jurisdic¬
tion, and that motion is still pending; neither of tho defend- 70
ants lias answered or ploadud in any way to tho merits. A
copy or said hill is liureto annexed and inado part hereof .
and marked Exhibit 17.
3. On or about the 23d day of October, 1876, tho defend¬
ants, Harrington, mid Edison, filed their bill in tho Circuit
Court of the United Slates for tho Soutliorn District of Now
l'nifc against this plaintiff and defendant Prescott.
Doth tlie defendants have demurred to suid hill. Copies
of said hill, and of the demurrers thereto, which woro filed 71
on tho 5th ilitv of February, 1877, arc hereto annexed and
innilo part horeof, as Exhibit 18.
Thirteenth.— On or about tho 14th day of December. 1875,
tlie defendant, Edison, executed and delivered to this plaintiff,
for a valuable consideration, an instrument dated that day,
whereby ho assignod and conveyed to tho plaintiff whatever
title or interest, if any, lie then had in tho inventions and
letters patent therefor claimed by the plaintiff, as set forth in
article third hereof, and also released it from all claim which «2
ho had or might have against it for any further payment ou
account of any of said inventions or patents; and also
thereby consented that the defendant Prescott might assign
lore sot forth with Edison, and with Edison nud;Prcscott, for
tho purpose of obtaining exclusive title and right to use ia
its business all thu inventions of said parties, or either of
them, in duplex and quadruple* telegraphy, described in
the second and third articles ; and it was induced to givo
such assistance and material, and to make tho respective
payments of $5,000, and to promise such (urlhor payments
of cash and royalties as it bound itself to make to said
parties, ns mentioned in the second article, solely on account
of their agreements to givo to the plaiutill such sole and
exclusive title to and right of uso of said invention, and
the letters patent therefor.
These inventions are of great use and value to the plaiu¬
till', and before tiny denial of its solo right to them was made
by any of the defendants, it had constructed and put into
use upon its lines costly apparatus for operating them in its
business, and it has used and will continue to uso said in von-
lions largely, as it has lawful right to do.
hut until plain till's sole and exclusive right to said
inventions and the patents therefor is established, and espe¬
cially until its right to them is cleared of the alleged but
unfounded claims to them of tho several defendants, it can¬
not secure performance by Edison of his obligation to it to
mnko applications and to join in assignments ol letters
patent for such inventions, nor can it complete its agreement
with Prescott, nor scuurc the letters patent to which it is
entitled; and for these reasons, also, it will be deprived of
the largo and just gains and profits of its purehnso to bo
derived from the uso of such inventions by others.
And so long, also, as the conflicting claims asserted on tho
one hand by Harrington and Edison, and on the other by
tho Atlantic and .Pacific Telegraph Company, asset up in
right or claim to the said inventions was thorotofon
by Harrington.
The plaintiff also fears that the defendants, II
and Edison, being tho aetual grantees of said lotti
No. 102,088, or that even tho Atlantic and Pueblo 'I
Company, which also asserts a title to said pm
transfer tho same to some nssignoe, now str.uigoi
litigations, who, especially on account of tho pot
uumstauees attending its issue, may pretend, wroi
against this plaintilf, to have taken such assignmci
notice of the plaintill’s title and right to it; and tin
may be vexed with still further suit or suits by sttol
or uvea by his assignees, for infringements of said
Fifteenth. — I n no one of the several notions nan
eighth and twelfth articles hcrcofean the plaintiff, ns
med and believes, make orenuse to be made parties l
tion those of the defendants heroin name I who are a
have complete enforcement and protmtion of its r
a perfect remedy against their violation, or against
tious and wrongful demands of the several dufeiidui
the directly opposing claims of thu plnintiff and c
fendnnts, as respectively asserted in this and s
notions in which said defendants or somo of them
till's, are determined iti ono suit, to which all of
parties, wherefore plaintilf has brought this nation
less, until thu liniil determination hereof, thu pres
tion of the alleged titles and rights of the respecti
prosecution by any of said parties of their seve
oithcr in tho said now pending suits or in any net
The plaintiff demands judgmont licroin :
First. — That the plaintiff is tliosolo owner of, and is on-
.itlucl to the exclusive right to use, all the inventions and
mprovcmciils nu-niionod in tlio applications numbered 91
o UIO, bull i inclusive, rclcrred to in tin: agreement of
August, L9, 1871, and hereto annexed, and all other im-
iioM.ith.nts in duplex telegraphy, the description of which
jcl'ore that lime had been Indeed with George M. l’holps
[hr l.lio' purpose of uoiistruotins! models thereof, including
miong these latter the inventions described in the applica¬
tions, numbered 112, 11!), and in the letters patent iiunilieied
L08,3So for the invention described in application No. Ill,
ilso hereto annexed ; and also all other such inventions
oid improvements which were included in said agree¬
ment of August 19, 1871, as therein recited ; and is entitled
to such letters patent of the United .States as have been
jr may be granted for all or any of the inventions or
improvements aforesaid.
as hereinbefore set forth, and especially all tl
/ s? tions and improvements for which the defendai
made the applications, numbered 01 to 100, both
• and also 112 and 118; and also all other invc
improvements in duplex or quadruplex telegi
descriptions of which were by said defendants, o
them, lodged with Cioorgo M. Phelps before the l!
, August, 1871, for the purpose of the construction
thereof, and also all other such inventions and
moats which were included in said agreement of /
1871 ; and do also upon the issue of such lett
join in the execution and delivery to the plain
'* instrument or instruments assigning and convu
such letters patent ns have been nr may be gram
aforesaid inventions or improvements, or any o;
for any other such inventions or improvements t
be made by said defendants or either of them, r
which they or cither of them may be interested
of their agreement of August 19th, 1871.
S x-ontl. — That the defendant lOdison, or Kdison and Pres¬
cott, and each of them, as may be necessary, according to
the practice of the Patent Offtee, do forthwith make and
prosecute, for the purpose and to the end of procuring
letters patent of the United States therefor, at the expensu
of the pi ail i till', hut in its behalf, the applications numbered
91 to 100, both inclusive, and also the applications num¬
bered 112 and 111), uui 1 also applications for all the other
inventions and improvements mentioned in the first prayer
hereof, nml do and perform all acts, and execute and deliver all
authorizations in writing or otlicnvisu requisite to procure
the issue of letters patent for each of said inventions to said
Kdison and Prescott.
Third. — That said defendants. Kdison and Prescott, join
in the execution and delivery to tlio plaintill ol an instru¬
ment or instruments elleetually assigning mid convoying to
it all the inventions and improvements in duplex and
quadruplex telegraphy made by them, or_ either of them,
Fourth.— That the plaintilV is the legal owner
entitled to the letters patent of the United S
102,883 and 108,885 and nil the inventions am
moats therein described ; and that it ho ndjn
neither of the defendants have any right, title or
cither of said inveniions or letters patent; and
bo severally ordered to surrender such nrigii
patent Nos. 102,083 and 108,380 to this plaintill
the defendants Harrington and Kdison, and the s
C. Rein; Thomas A. Kdison, William M. Soyforl
J. Palmer, Henry L. Dallett, .Tr., Augustus B. 1
Robert W. Russell, trustees, as assignees of said H
and as his substitutes ns attorneys of said K
the Atlantic mid Pueifie Telegraph Company, d
and deliver to the plaintiff a sufficient instrument
meats, assigning and conveying, or disclaiming ant
to the plaintiff all right, title, or interest or every
any time alleged by said parties, or either of the
letters patout.
j third article hereof, mid from giving, or making any instru-
, ment or doing any net purporting to give; miy right, title nr
interest in any of the letters [intent or inventions aforesaid,
or any lieensc or right to use any of them ; and that the said
am lie ordered hv the judgment of this Conn to execute
deliver to the plnimiH' good and sufficient instruments
luc form of law, conveying to it whatever right, title or
■rest lie tuny have in said lot lets patent Nos. 102,033 or
,,385, or in any id the letters patent aforesaid, as well any
t have been, ns those which may he hereafter, granted to
iixlh. — 'flint it lie adjudged and decreed that neither the
I Kdis-on nor Harrington assigned or conveyed by the
nimcnts of January d, 1876, or January 1, 1875, re¬
ed loin the 6th article, any tight, title or interest, or power
lispose of any right, title or interest in any of l lie invett-
s in either of said instruments deseribed, or in any of
inventions in duplex or ipiadruplcx telegraphy belt Jig
to this ph intilf, as described in the 3d nttiele of the
plaint; tiOr did either of the defendants, fiould, Mills,
tlte Atlantic and Pacific Telegraph Company, ncipiire
■ right, title or interest, or power to dispose of any right,
t or interest in any of all the aforesaid inventions, by
tie of either of said instruments of January *1 or January
ir under or by virtue of either of the instruments of
unify (!, .March 0, or July li), 1875, described in tlic 6tli
cle hereof, anti tiiat each of said instruments he declared
1 and void and ol no client, as against the title of this
Seventh — 'flint it ho adjudged mid decreed that tho defend¬
ants, Josiali C. Hcitf and his co-trustees, neither nerpmed
nor have, either as assignees of defendant Harrington or as
his substitutes as attorneys of defendant Edison or other¬
wise, any right, titlo or interest in, or power to dispose in
any way of any right, titlo or interest in, any of tho inven¬
tions or letters patent belonging to this plaintiff, as set forth
in the 3d article of this complaint. 94
livjhth. — That tho defendants, the Atlantia and 1-ncdlo
Telegraph Company and Harrington and Edison, and each
of them, and their respective olUccrs, agents, attorneys, aud
sorvnnts ho enjoined and restrained, during tho pondoncy of
this notion, from further prosecuting, or proceeding in any
respect, in their respective suits described in the eighth and
twelfth artiolcs hereof.
iVtnl/i.— That, during the pendency of this notion, all tho 95
defendants and their respective ollieors, agents, attorneys, and
servants ho enjoined from instituting or prosecuting, cither
•against the phthitilf or any of their co-defendants, any
action, suit or other proceeding, lynching any of tho in¬
ventions or improvements of letters patent therefor, referred
to in tho third article, or involving any of the mnttors of the
soveral suits or actions hereinbefore referred to, or of this
notion ; and especially from requesting or petitioning, or prose¬
cuting tiny request or potition to, the Commissioner of
Patents or the Secretary of the Interior of the United States, 90
for the issue or delivery of any letters patent except to the
or incumber the sttitl loiters patent nmnlieroil 102,038
108,385, or tin; inventions tlierein described, or tiny otln
the inventions described in tlio third article lioreol', or
right, title or interest in tiny of thorn, or any liconso or i
to use any of said inventions under tlio said letters pti
Nos. 102,038 and 108,885, or in or under any letters pn
for any of said inventions; and from withdrawing, am
ing or otherwise interfering in tiny way witli any of the tt|
cations for any patent for said inventions which were p
ing in the United States 1’atent Ofliec on tlio 1st dn
December, 1874.
Eleventh. — That by the judgment heroin till the defend
and their respective ofliecrs, agents, attorneys, and serv
he perpetually enjoined and restrained, except for the he
of this plnintillj ns is prayed in the eighth, ninth and t
prayers foregoing, in respect to injunction during the
deucy of this action.
Twelfth. — 'Hint the phi hit til have such other and
tlicr relief and decree as may be just.
i’OHTKH, LOW BUSY, SOliKN k STONE,
Plaintiff's AUorne,
State op New Yoiik, )
City and County of New York, f ‘
Exhibit 1.
ASSIGNMENT— EDISON TO PRESCOTT, DATED
AUGUST 10th, 1874. 102
Articles of agreement made ami entered into this nine¬
teenth day of August, A. T). 1874, by and between Thomas
A. Edison, of Newark, in Lite Stale of New Jersey, and
George B. Prescott, of the City and State of Now York,
Witnessdh : Whereas, said Edison has invented cortnin
improvements in duplex telegraphs, for which he has oxo-
outod, or is about to execute applications for letters patent
of the United Status, ami snub applications are numbered
04, 05, 01!, 07, 08, 00 and 100, and are dated August 10, 108
1874, and said Prescott is entitled to an equal interest in tho
same and others hereafter mentioned ;
Therefore, in consideration of thu premises, and tho sum
of one dollar in hand paid, tho receipt whereof is hereby
acknowledged, the said Edison has sold and assigned, and
doos hereby set over and convey unto tho said George B.
Prescott, one undivided half part of tho right, title and in¬
terest, of every character, in, to, under, and connected with,
each and all the aforementioned inventions and letters
patent on the same, when granted, and authorizes and re- 104
quosls tho Commissioner of Patents to i>suo the said letters
patent to Thomas A. Edison and George B. Prescott, as the
assignees of said Edison, for tho use and behoof of them-
selves and their legal representatives. And whereas, thu
said Edison has also invented other improvements in duplex
telegraphs, tho descriptions of which have boon lodged with
Georgo M. Phelps for tho purpose of models being con¬
structed, it is hereby agreed that such inventions are in¬
cluded in this present agreement, and that, when the appli¬
cations for patents are made, tho patents to bo granted in 105
accordance herewith, and that thu said Edison shall sign the
required papers therefor.
This transfer is made on the following tonus and con-
$1,120 for models unci patent fees, the benefit of which lie
contributes to the common interest, ibid waives reimburse¬
ment of that Mini, or of any part of it, l’reseott hereby
agrees to pay solely, and without contribution from Edison,
ail tlie future expense and cost of specifications, drawings,
models, patent oilice fees, and patent solicitors anil agents’
loos, and all other charges, incident to the procuring of let¬
ters patent for any of said inventions.
108 'Jhinl. — That neither of said parties will sell, assign, or
otherwise dispose of the whole or any part of his interest in
said inventions, or letters patent therefor, or any of them,
without tlie written consent thereto first obtained of the
other party.
Fourth, — That neither of said parties will himself manu¬
facture, use or sell, nor grant licenses, nor the right ill any
way to any other party, to manufacture, use or sell any of
tlie said inventions, or any improvements thereof, or anv
100 machine embodying or article containing any of said inven¬
tions or improvements, or protected by any of said letters
patent, without the written consent first obtained of tlio
other party. '
Fifth. — No salo of any of tlie said inventions, and no license
or right to make or use tliu same, in any way, shall bo made
or given, except at a price to which both parties agree in
writing, and all net profits shall be equally divided between
Exhibit ».
PRELIMINARY RECEIPT.
N. Y., Doe. 10, 1874.
Il'/ic-rats, Thomas A. Edison and George B. Prescott arc
the inventors of certain improvements in telegraphy, re¬
lating to duplex and qundruplex telegraphing, for which
letters patent of tlie United States have been applied for by
said inventors, and
Wltemi", said Edison and Prescott have agreed to assign
all their right, title and interest in and to said invention
and letters patent to tin; Western Union Telegraph Com¬
pany, provided tlie terms of payment for such assignment
and irnnslbr shall be satisfactorily adjusted between the said
parties and the said telegraph company:
I, the said Thomas A. Edison, hereby acknowledge the
receipt of five thousand dollars, to me in hand paid in part
payment for my interest in the said assignment and transfer.
Witness my limit! anil seal this tenth day of Decombor,
1871.
THOMAS A. EDISON, [n. s.]
Witness —
A. R. BltEWKIt,
bounty of New York, SS.
21st day of January, 1875, before me personally
A. 11. Brewer, to mu personally known, and
mo to be tin! subscribing witness to tiio foregoing
t, who, being by me duly sworn, said: that he
the City ol Brooklyn, in the Stale of New York;
r,s acquainted with Thomas A. I'.disoti, and knew
the person deseribcd in ami who executed s:tid
it, ami that he saw him execute and deliver the
that lie acknowledged to him, said A. H. Utewu,
xceuled and delivered the same, and that there-
said A. 11. ISrewcr, subscribed his name as a wit-
11. M. 1.1 A IU11,
Notary Public,
N. Y. Co.
Exhibit :i.
PRELIMINARY RECEIPT.
Nu\v Ytmtc, January 10, 1870.
IS, 'rhoinas.A. Edison and George B. 1’resuolt are
owners of certain improvements in telegraphy,
to duplex and (ptadniplex telegraphing, for which
dent of the United States have been applied for by
mas A. Kdison, and
us, said Kdison and Prescott have agreed to assign
right, title am! interest in and to said inventions
■i- patent to the Western Union Telegraph Com-
ijvided the terms of payment for such assignment
sfer shall be satisfactorily adjusted between the said
ml the said telegraph company:
Witness my hand and seal this sixteenth day of January
1875.
(Signed,) GEORGE B. PRESCOTT.
Witness —
(Signed,) Gkhkit Smith.
R. IT. UocitHSTElt,
Treasurer.
On the delivery to you of this paper pay George B. Pres¬
cott the sum of live thousand dollars ($5,000).
(Signed,) WILLIAM ORTON,
Jan. 16, 1875. President.
Received live thousand dollars, Now York, January 16th,
1876.
(Signed,) GEORGE B. PRESCOTT.
Paid Jan. 10, 1876, by
R. H. ROCHESTER,
Treasurer.
Exhibit 4.
lion. Wm. OltTOX,
Pros' t Union TeVyh Co.
])’r Sir— Your company 1ms over 26,000 miles of wire
which can now bo profitably 11 quadruplexod.”
Considering those 25,000 miles to bo already duplexed,
the qundruplex will orente 50,000 miles additional. ■
For all our pntonts and ellorts in protecting tho company
in the monopoly of tho same during their life, wo will take
l-20lh of tho average cost of maintenance of 50,000 miles
of wire for seventeen years, one third down and the balance
in yearly payments during the above mentioned period.
uy.flve thousand ilown, mid twenty-
nibs lor alj- patents, mid n royalty
pi year for each circuit created.
i-cnty-live thousand down for all
jf l?28S per year for encli circuit
I, and especially to tin: two oilers in
i or a! tout the 30th day of Dceunitwr
s twenty-live tliousmid down, and
in six montlis for all patents, and a
of $1015 per' year for cacli circuit
your earliest convenience, and to make all the payment
called for, upon receiving from you proper assignments am
transient of the .said patents.
Yours, very respectfully,
WILLIAM OllTON,
President.
To the Honorable Commissioner of Patents.
Your petitioner, Thomas A. Edison, of Nowark, in the
County of Essex and State of Now Jersey, prays that letters
patent tuny be granted to him for the invention of an im¬
provement in duplex telegraphs, set forth in the annexed
specification.
And further prays you will recognise Lemuel W. Sorrell,
of t he City of New York, N. Y., ns his attorney, with full
on, to make alieratii
■e the patent and to
leation to prosecute this appli-
I amendments therein, 'to re-
lot'nll business in tho Patent
THOS. A. EDISON.
Now York, N. Y., Aug. 10th, 1874
UNITED STATES OF AMERICA.
City, County and State of New York, ss
Til OS. A. EDISON.
181 Sworn to before me, the tiny )
and year above written, J
Ciias. H. Smith,
[Seal.] Notary Public,
Kings Co.
SPKOIFIOATIOtf.
1o all whom it may concern :
13a 1. Be it known, Unit T, Thomas A. Edison, of Newark, in
tlie County of Essex and State of New Jersey, lrnve invented
an improvement in duplex telegraphs, of which the following
is a specification :
2. I make use of a compound induction eod through
which the currents pass, and those from the sending station
are balanced, but the current from the distant station is
operative.
183 3. The helix a surrounds the central part of tlie core that
passes through the electro-magnets b and c, hence a second¬
ary or induced ourront is set up in tlie helix a only when
there is un excess of current in one of the helices 4 or c
because if the current noting in 4 is equal to that acting in
c, and tlie helices aro properly wound, the magnetizing
actions of tlie helices on tlie core will neutralize each otiior,
and there will not be any secondary or induced current in
a, but when tlie current in one helix is greater time that in
5. The current in a operates in tlie polar
to open and close the local eirouit g, in whit
receiving or sounder instrument 4.
ti. When the pulsation passing along the
distant station ceases,. the core of the helix
and in so-doing sets up a second induced
opposite polarity to tlie lirst, and that, aetii
ized magnet / instantly throws the eoiitin
armature the other way and opens thu local
7. These operations in tlie compound dillci
coil being homo in mind, it now becomes i
plain tlie manner of sending through sneltcc
dticing uny action on tlie helix «.
8. The key l in tlie local circuit to tlie ma
tlie lever » that contains an insulated spring
against tlie circuit point 4, and the book on
?t, so that when tlie key l is closed tlio levt
spring 8 into contact With 4, closing tlie c
battery o through 4, 8 and tlie wire 0 to tin
and at tlie same time breaking the contact
hence cutting out the ground wire 8 from
the moment the lever it returns to its norma
demagnetizing of in, the spring 8 closes the
before separating from 4, lienee there is al
circuit complete, for tlie pulsation coming I
station, whether tlie circuit of the sending bat
mat cavities at tu, ami passes through b aim c, l introduce,
in coiuieetioii with the helix c. an artificial line equal in
resistance ami conditions to the line k, hence compelling an
equal current to pass through b and c. To effect this, the
resistance r is placed in the ground Connection from c, which
resistance should lie adjustable, so that the rheostat or re¬
sistance r equals the line, and in order to set up in c, a
eounter magnetism equal to that set up in b by the statiu
from the line, 1 make use of the electro-magnet t placed in
ISO a shunt that passes around c.
10. By this construction of compound dlll'crcntial in¬
duction coil and the arrangement of the connections, the
inductive ell'cets of pulsations from the Bonding instrument
arc balanced and neutralized, while the pulsations from the
distant station operate the receiving instrument.
I claim as my invention —
1st. The compound difibrentinl induction coils a be, in
combination with the polarized relay/ and the circuit con-
-10 sections substantially, as set forth.
2d. The artificial lino composed of the rheostat r and
magnet t and ground connection in combination with the
compound induction coil and line connections substantially
Signed by me, this 10th day of August, 187-1.
Witnesses — *ll0& JiWS0*'
Ciias. H. Smith,
tl Geo. T. Pinckney.
CASE No. 05.
Application and Oath as in Case Mo. 0-1.
Specification.
To all whom it may concern :
13o it known, that I, Thomas A. Edison, of Nowark, in
/ the County of Essex and State of New Jersey, have in-
/ vented an improvement in duplex telegraphs, of which the
f* following is a specification :
A balanced battery is used for transmitting when the
balance is disturbed. An electro-magnet is used through
which both the received and transmitted pulsations pass,
and the connections arc made so that the action of the cur-
>' rent sent is balanced, while that coming from the distant
’ . station is operative to work a balanced relay and local cir-
:\; i cult or sounder.
In the accompanying diagram drawing, the battery a b is
connected at one end to the lino wire c, at the othor end to
the closed key e, anti in the middle to the ground.
The connection 8 from the key e to the lino c passes
through the induction coil and core/ and there is a second
induction coil ij around the toil / that is in a shunt between
the line connection c and the branch h to the ground, id
which branch h there is a resistance It, that is adjustable.
5 y The line connection c bifurcates at f, passing one way
; ' through the helix l to the ground brunch h, and the other
way through the helix m to the main line s. The electro¬
magnet l m, being wound in the usual way, will not respond
when the connection is made in the middlo, because the
current passing from e goes one way through one helix and
the other way through the other, polarizing the cores, so
that the armature r is not attracted. It is important that
the resistance of the brunch It and rheostat It should bo
about the same as that of the main line s, so ns to cause the
current to divide equally at i.
f It will now bo understood that any current from the dis¬
tant station passing through the magnet m in the usual
direction will cause the nnnnturo to respond, whether, there
is any current passing through the helices or not from the
sending stntion, and this electro-magnet m and armature act
ns a relay to operate the local circuit s and sounder t.
’ : The main battery, it will bo seen, is in a local circuit
when the key e is closed ; hence, if both sides are equal,
1 ■ there is no current passing upon the main line, but when
CASE No. 96.
key c is closed, the induction coil /is charged,
rges when the key e is opened; the helix ./,
charged hy induction, also discharges and sets
Bin that equals that resulting limn the static
line, and the reverse currents arc produced in
coils as the circuit is closed at e, thus such
s serve to neutralize or balance the cll'ect ol'
irge and prevent any false pulsation on the
uiltiiig from the return static charge acting
pparent that the closing of the key e and the
the battery 4 with the line, lends to set up in
to earth, currents of opposite polarity to (hose
n the battery «, because the positive of the
egative of the other are to the ground and line
iitid this local circuit c it c 4 serves to lnniu-
ken connection that oilers but little resistance
itioti from the distant instrument passing
and the resistance is nearly uniform to the
ed, whether there is a current that is being
1. lie it known, that I, Thomas A. Edison, ofNcwark, in
the County of Essex mid State of New Jersey, have in¬
vented an improvement in duplex telegraphs, of which the
following is a specification :
2. The transmitting battery is connected with the line by 161
a lever that simultaneously breaks the earth connection, so
as not to interrupt the continuity of (lie circuit; tho current,
sent divides and operates equally in two helices; in one he¬
lix there is a sliding core that moves with the armature of tho
other helix, and t his latter responds to tho piilsmion from tho
distant instrument and closes a local circuit to a sounder or
other receiving instrument, and there is a mechanical de¬
vice, .that serves to compensate the attraction in one of
the magnets that, is duu to tho reverse action of tho statio
discharge, thereby causing the forces to be accurately 162
balanced.
1 « 4 in a local circuit connected to the line, in
•ii'cuit breaker, a linger key in combination
ict l m, branch h, and resistance k, and the
s f j, the purls operating substantially as set
ne, this 10th day of August, A. 1). 187-1.
THOS. A. EDISON.
‘1. !1 ho lever e, actuated by the armature c. closes tho
line conncct.-on/from the battery ij, just before breakings
the earth circuit of die line at h, so that there is always a
path for the pulsation from tho distant station. -j
6. The circuit from e bifurcates at, k, and a portion of tho
pulsation sent passes through /, and upon the lino r, and nil
equal portion of the pulsation passes through m to tho arti¬
ficial line conq osed of the rheostat s, and ground connection,
said rheostat being adjusted to equal the resistance of the
THOS. A. EDISON.
CASE No. 07.
Application anil Oath as in disc 1V0. 01.
Sl’KOIFIOATlOX.
To all whom it may concern :
I)o it known, that I, Tlinnma A. Edison, of Nownrk,
tiio County of Essex and State of New Jersey, have :
vented an improvement in duplex telegraphs, of wltiuli t
following is n speeilloalion :
Two bnltericsaro omployod that tiro balaneed by rlieosta
and the static ulinrgo oomponsated by an electro-magnet, at
tlie same poles of the batteries are conneotod at opposi
sides of a receiving or relay magnet, lienee the batteries no
tralize eaeli other in the constantly closed circuit.
t&i,), ClIAS. IT. S.M
/</, :iml when die k«sy is closed the r* 111:1.1/ m-t y at lr:i<;ls
tin' armature-and lever A. closing the circuit i k to tin: irn
tre nf tint batteries c tl; lienee short circuiting e, and allow¬
ing (I to net In tin: line.
In order to compensate the . . if tin: hatterv ft in /..
t lie loiial balJery / is used, uti.l the loetil eirettil f 101,1 /llirongb
the insulated spring m and rheostat to the lino « is eloseil
simultaneously with the short circuiting of e, amt this rheos¬
tat r is ailjnstoil so that the action of I in !• eiptals the action
of 1/ in /1, inn), lieite.: In reverse, the forces are neutralized.
The helices /‘ami 7, being charged ami discharged simul-
tmieonsly, there is an imlnetive ufiirutft set up In the core of
f ami the helix n, ami that gives a . . Inrv charge to the
helix e that siirroiiinls the core of I, ; ami lienee, when , is
close, 1, the secondary elfeet in neutralizes the static elteet.
as the line is charged. ami as the circuit at the l;ey e is
broken, a reverse induction current is set up in 11, neutraliz¬
ing the discharge of the static charge of the line, the helices
being wound so ns to produce this reverse and neutralizing
elfeet in the eon: of the electro-magnet h by the helix 11.
CASE No. 99.
Application and Oath, as in Case /Vo. 94.
fsl'KCtmCATtOX,
To alt whom it may concern:
(1) lie il known, that T, Thomas A. Edison, of I
the Comity of Essex and State of New Jersey,
vented an improvement in duplex telegraphs, of
following is a speeilieation :
(2) The object of this invention is to enable twr
to .simultaneously send over one wire in one dirce
(8) By duplicating the parts herein described, fou
ting operators mid four receiving operators can wi
tnncously over one wire, two of each being atcael
(4) In tlio diagram, Fig. 1, 1 have only shown the
jtions lmvc been reversed while the key c is closed. ,
1 claim as my invention :
First. Transmitting two distinct messages over one wire
tho same direction and at the same time, one operating
reversal of the battery current and the other by incrcas
; or decreasing the current from the battery.
Second. In a duplex telegraph the polarized magnet, and
ordinary magnet in the same circuit, when arranged sub-
ntinlly as specified, so that one responds to change of
Inrity of the current and the other to an increase and do- ■ s
use or tho current, substantially as set forth. '''
Third. The arrangement of two keys, of, battery a 4, and
■ersing circuit connections, substantially as set forth, to
ng into action the whole or a portion of the battery, and
reverse the polarity of the cm rent passing on the line
.limit entirely interrupting at any timu the inclallie
Fourth. The reversing key / made with the arm springs
and lfi, and circuit closing points LO and 10, substantially f \
set forth. b.,.‘
Fifth. The receiving instrument or sounder in the constant ■
unit from the battery a in combination with the balancing
:al battery v, circuit and circuit-closing armature s. and
'etro-magiiet e, substantially as set forth.
.S'l'.t th. in the duplex telegraph, arranged for sending two
mrate messages simultaneously in the same direction and
in) the same end, the circuit breaking key /. at the reeoiv-
; end and the tell-tale magnet Ic in the line at the trails- •
tling end, for the purpose set forth. ,
Signed by me, this littli day of August, A. 1). 187-1.
THOS. A. KDISON.
Witness :
Chad. If. Smith,
GUO. T. l’l.VCK.NKY.
Application and Oath, as in case iVo. 9-1.
Specification.
'to all whom it may concern :
He it known, that T, lliomus A, Udison, of Newark, in
tho State of New Jersey, have invented an improvement in
duplex telegraphs, of which the following is a specifica¬
tion :
Whore two persons are sending ami two receiving, ono at 19]
each end, the entire line is sometimes doranged by a signal
from one of the receivers to repoat. My invention is made
to allow either party that is receiving to interrupt tho per¬
son sending to him, so that he is thereby warned to repeat,
and that without interfering with tho other messngo that is
being sent or received.
In tho diagram drawing, a is tho lino, 4 the receiving relay
instrument, d is a helix around tho same core as 4, and this
helix is in a circuit passing to tho artificial lino and rheostat
c, and this rheostat is to he adjusted to equal tho line, so 192
that the pulsation from the sending station, acting in reverse
in tho helices, 4 and d, produces no magnetizing effect in the
core, but tho pulsation from the distant station, passing along
a, acts 111 4. unbalanced, and either produces tho sound by
the armature magnet, or else works a local circuit and
Thu pulsation received from the distant station passes by
8 /and -1 to the earth connection
Tho lover/ is operated to give the pulsations that are sont
upon the line, anil these pulsations divide at 0. passing pgg
equally through tho helices. <j and 4, tliouco through tho
holiccs 4 and d aforesaid.
The helices y and h nro of a differential polarized rolay, tho
longue or polarized armature luver i of which forms a cir¬
cuit breaker in the local circuit k, I, m, and in tbis circuit
the koy l nets to open or close tho circuit, and by tho electro¬
magnet m oporato tho lover / and send tho pulsations upon
tho line.
THOMAS A. EDI:
!iias. IT. Smith,
rUO. T. L’lNOKNEV.
CASE No. Ill.
Application ami Oath, as in Case No. 94.
Aitlioation.
whom it may concern:
it known, that], Thomas A. Edison, oCNewarl
of Now Jersey, Imvo invented an iinprovemen
elegraphs, of whieli tlio following is a spcciliea
.■ object of tins invention is to more perfectly
iMti'nlizo the static discharge of the line, so tli
ot lie any false pulsations,
lie accompanying diagram, the pulsation is give
ig station by the circuit preserving key a, hi
onneetion e, to the bridge wires if, e, bet ween tli
trth ;/.
the portion <1 of the bridge, is the electro-inn
icostat k, and in the portion c is the clcctro-m
icostat m, and the receiving instrument is place
; 2, botweon the two portions tl e of the bridjj
ing instrument is made of two olectro-magr
ro placed at opposite sides and onds of the ai
n, so as to act thereon in unison with each otl
res of these electro-magnets are extended a
ad with the additional helices r and s, that
lirouit from the battory /, and provided with a i
object of this being to sot up a sufficient magi
i the line, thereby hnlnneing stieli currents ami
e receiving instrument free to respond to the pul-
n the distant instrument. This local circuit and
0 serve to neutralize any residual magnetism in
This arrangement of electro-magnets and helices
:i remit is not herein claimed, and it is sut forth in
application made hy me.
dro-magncls //, /, set-up in the triangular or In-idge
, 2 a secondary current when the circuit from h
so as to neutralize the static discharge from the
artificial line;/,')/.
irptonce of the differences of condition between
line/ and the artificial line;/, ;/, it is difficult- to
rheostats & at, y, snas to perfectly neutralize the
urges, and equalize Iheiractinn in the bridge it, e
receiving instrument will he at a neutral point,
e their operation, we make use of a second artili-
rmed of a rheostat 12, earth connection Itj, and
around the cores of the electro-magnets /, so that
m from e, dividing a portion, goes through I I, 12
well as through h and I, the result of which is
res of / are more highly energized than of », and
any or secondary . Telit set up in r, by /, is in-
whatever extent may lie required to equal the
arge from the line circulating through it, and the
is my invention :
tro-magnets a and /, placed i„ the bridge circuit
e sending instrument and the line, and artificial
tetively, in combination with the second nrtilieial
l the helices l-l, around the cores of the electro-
»' the purposes set forth.
y me, this 18th day of .ranunry, A. D. 1875.
THOMAS A. KD1S0N.
I'. PiXOK.NKV,
If. Smith.
0AS15 NO. 112.
m oironit formed by
licostai.s /j /, should
its that may leak in-
t insulation. or other-
KNiO.tllU. poles of the
ceording to the char-
thereby the line is
sums, beenuse if the
.station is varied by
ilion of the same po-
apposite polarity,. the
oltect is neutralized by the local circuit from l, and the c
k, k, acting upon the cores of the magnets h, in a win
balance the efleets on such cores by the leakages of'
line.
9. The armature lover ?, operates the local circuit of
battery o, and in this is tho sounder p, for receiving ft
the distant station, and to this sounder is also connected
local circuit ij, ns explained in one of my previous nppli
tions for patents; in this enso tho sounder j>, responds
cording to tho pulsations from the distant station, whet:
the same is a rise or decrease of tension ; so also tho sou
err, in tho local circuit front r, is operated by thopolnri:
magnet «, according to the reversal of tho currants from
sending station ns before explained in my previous nppli
10. In the circuit between 6 and 9, is placed a second ]
larized magnet f, and its armature ts operated only by I
reversal of the current, and it opens and closes tho circ
I, through the retractile magnet «. This magnet n, tnl
tho plnco of a spring to d»nw back the armature i. It
known that when a reversal of the currant takes place itt
electro-magnet, there is a movement of neutralization or
magnetism, hence at that moment a spring, il used, pulls t
armature back and produces a false operation in the qundi
plex telegraph especially. The- tongue of tho polariz
magnet I, in tho circuit of the permanent retractile magnet
being moved by reversal of current on tho main line, opt
the circuit of v, momentarily, and then closes the sen c
ns to neutralize as far as possiblo, tho risk of a false mot
ment of t, by breaking tho circuit of u, at the instant of t
versing tho polarity.
11. Tho galvanometer at v, and a switch x, to plnee it
circuit, is useful in the adjustment of tho rheostats and tl
balancing of the electric energies. When tho resistance i
tho artificial lino is equal to that of the main line, there tvi
not be any current through the bridge, hence tho galvai
ometer will remain uninfluenced.
12. The finger keys 10 and 11 are employed to open an
close local circuits to the electro-magnets 12 and 18, an
these, in turn, operate the circuit preserving koys 11 and 1
ft'irtt, Tiio urlitiekl linn mndc of the divided rheostats h
a divided condensers n, connected substantially ns speci-
dsons to uptulueln ibc pingicsne discharges, the
Ilio discharge front the line, snbstnntkily ns set forth.
Scon, A The rheostats// nml electro magnets j, ;/ in the
•idgo wires e to ttfiSttrnliat the discharge from tiio electro-
ngnots plneetl between 5 nml 8 in the bridge, substantially
set forth.
Thirtl. The rotmetile iiingnet «, combined with the mug-
it h, nml polarized mnguet I, thnt nets to momentnriJy
enk till! eiieuit of u, when the reversnl of polarity Utkes
Signed by me, this tltinlny of December, A. D. 187-1.
T1I0S. A. EDISON.
220 Witnesses:
GUO. T. l’lNOKNT.V,
Citns. 11. Smith.
CASK NO. 118.
Application aial Oatli , ns in No, 9-1.
switch 13 is closed. Tims, one or more messages may be
automatically repeated in long lines without interfering
with the working of the other portions of the quadruplex
instruments in either direction from the intermediate
station, d^ ^ wjsh tQ U011|-IU0 myself to any particular nr-
ram'oment of tho various batteries and devices employed
for receiving, tramsinitting, otc., in a quadruplex telegraph.
What I claim is:
First. In a quadruplex repeater tho combination of the
two receiving instruments in ono circuit with the two mag-
nots and transmitting device in the other circuit, connected
so that signals made in one circuit will bo ropented to the
receiving instruments in the other circuits, and vice versa.
Second. In a quadruplex telegraph a main line circuit
divided and provided with local batteries and circuits that
opemto the repeating instruments, substantially as sot forth.
Third. The combination in a quadruplex telegraph of the
regular receiving sounder in the same circuit its the trans¬
mitting magnet that repeats the message upon the other
line, substantially as sot forth.
Fourth. Tho combination in a quadruplex repenting tele¬
graph of switches or circuit connections for dividing the
local circuits to allow each quadruplex line to work inde¬
pendently, substantially as sot forth.
Signed by mo, this 2-ltli day of Eebrunry, A. D., 1875.
THOMAS A. EDISON.
Witnesses :
Gko. T. Pincknky,
Guo. D. Waucku.
T.AEdvon, A*?*.
Duplex Telegraph,
nic&peptJ, /f/4
TAEdi/M,
Zhijilex TelegrajiJi ,
Filed pejitJ, /ff4 .
Exhibit 8.
vuow all moil by these presents that,
Kdison, of Newark, in the State o
anted certain improvements in da
icli I have executed and am about to
letters patent of the United States, a
numbered 04, 05, Oil, 07, 08, 00 and
gust 10, 1874;
in*/, wherein, I have invented otlic
ilex telegraphs, the descriptions am
o been lodged with I* W. Sorrell, i
Slate of Now York, lor the purpose c
I ml wherein, I am the inventor of o
ting to duplex as well as ipmdru]
li of which 1 am about to make apj
ow, in consideration of one dollar I
receipt of which, as well as other go
rations, I do hereby acknowledge, I
it auto Jay Gould, of the City, Conn
k, full (and irrevocable) power and i
, transfer and set over unto any | ei'i
itiou any right, title and interest in
inventions or improvements relatir
inlet any letters patent, which may I
time may belong to me, relating to
aliens or improvements; and I d<
grant to said .lay Gould full (and
authority to give or grant any linens
udor any or all of said letters patent
or all of said inventions or improve
ml I do hereby also give and gr
Id full (and irrevocable) power and i
my reissues or extensions of the same or any of Ilium. To
•mvo ami to hold— the same to the said Samuel M. Mills,
Ins exceutors, administrutors and assigns for his and their
awn use and behoof to the full end of the let tit, as well as
renewals thereof, for which the said letters patent have been
ar may hereafter ho granted, as fully and entirely as the
•nine would have been held ami enjoyed, or could lie held
mil enjoyed by me, had this assignment and sale not been
made; and I hereby request the Commissioner of Patents,
.0 issue to the said Samuel M. Mills, as my assignee, letters
intent for all my right, title and interest in and to the said
nvontions or improvements, for the solo use and behoof of
limsolf and his legal representatives,
I hereby further covenant and agree that this assignment
shall cover and include till letters patent granted, or to ho
{runted, in and for foreign countries as well as the United
-tatos, and all inventions or improvements which may here-
iftcr bo made thereon or relating thereto, as well as all ex¬
tensions and reissues of any such letters patent, in the said
United States and all foreign countries.
And I hereby covenant, that 1 have not manufactured,
Statu ok Nkw York, 1
City and County of New York, f
On this sixth day of .lanuarv
value Jay Clould, the attorney i
1 I hoiiinS A. Kdisou to the sard Jay lloulil, be
e -Itli day of January, I STG, and recorded in I
to Commissioner of I’atcnts at Washington, D.
day of January, 1875.
OWN J. CLAUSON,
Notary Public,
•auson, n. Y. Co.
Exhibit 10.
Whereas, by an indenture bearing dnto the first of.Oct
ber, A. D. 1870, Thomas A. Edison, of the City of Ncwai
State of New Jersey, and Cl eorge Harrington, of the City
Washington, District of Columbia, became copartners ai
joint owners, as manufacturers and inventors for n period
five years, and whereas, the liftli section of said imletilti
provides that the said Edison “shall admit no other parti
to any direct or indirect interest in or to any inventions
improvements made or to be made by him" except
thereinafter sot forth, but all such shall inure and belong
the said Harrington and Edison in the proportions as ;
forth in section sixth of said indenture.
And whereas, the sixth section of said imlenltire prnvid
that the proportions referred to in section fifth shall be o
third to said Edison and two thirds to said Harrington, all
which will more fully appear by reference to said indentui
copy of which is hereto attached. Aw/ whereas, in furtlii
mice of the provisions of said indenture, and the purpos
of said copartnership, the said Thomas A. Edison by an i
strument in writing, bearing date the fourth day of Ap
A. I). 1871, duly recorded in the Li. S. Talent office the (1
May, 1871, in Liber U II), page 412, of transfers of paten
11 to which reference is made, duly set forth the fact of sa
joint ownership in his inventions, in the proportions of o
third to said Edison and two thirds to said Harrington, in
did therein formally assign and set over to said Uarringli
an undivided two thirds of allot his inventions mndcorto
made, and then and therein Constitute and appoint, the sa
George Harrington his true, lawful and only attorney in
vocable, with power to substitute for him and in his nan
and in such manner as the said Harrington may think be,
to sell, transfer and convey all his rights, titles 'and intort
in and to all of his said inventions, and the improvemer
thereto, whether made or to be made, and to sell, Irntisf
and convoy all of his rights by patent or otherwise arising
therefrom already made and obtained, and all such as may
hereafter be made or obtained, and to execute in full any
hereby acknowledged, I, the said George Harrington, of t,
City of Washington, District of Columbia, have grnntc
bargained and sold, and by these presents, do hereby grin
bargain, sell, assign, transfer and convoy unto Jay Gottld, <
the City of New York, Slate of New York, his exeeutoi
administrators and assigns, the said inventions, of sa
Edison, known as duplex ami ipmdrnplex telegraphs, t
gethor with all the rights, title and interest therein mi
thereto, of the said Thomas A. E lison as the inventor then
of, and all tho rights, title and interest of the said Tlionu
A. Edison and of the said George Harrington, as then
signeesof said Edison, or either of them, and all the righ
title anti interest which they or either of them now linvo t
limy hereafter acquire in or to any lettors patent issued c
allowed, or that may hereafter bo issued or allowed for an
such inventions, whether made or to bo made, as well as t
all improvements that may hereafter bu made, and in and t
any reissues or extensions of the same, or any of them tin:
in any manner relate to (ilu/ile.i: awl) quadra plex telegraphy
to have and to hold for himself, his executors, admmistrr
tom and assiirns for his and their own use and behoof to th
[Ex. 11-12.]
orizcd to do, in mid by a cortnin in¬
juring date April 4th, A. 1). 1871,
tired by the said 'I'lionins A. Edison
myself and investing him, tbe said
relates and applies to duplex and
and no more, with all tlio power in
!is<sl by mo in person, and retptesting
tents to recognize him as the duly
said Edison and Harrington in all
relating to duplex anil iptadruplex
nevertheless, that it is distinctly tin-
itipiilntcd that this disposition, sale
ox and rptndntplox telegraphy and
i anil transfer does not and shall not
any inventions heretofore made, nor
ssued or allowed, nor any future ini-
lereto, for duplex telegraphy in con-
ilegraphy, but all such remain as the
gton and Edison, and under the sole
Ion, the . . . as if this sale, assign¬
or had not been made or executed,
the said George Harrington, for my-
slituteil attorney of Thomas A. Edi¬
fy hand and seal, in the City of Haiti-
!, this ninth day of .March, one thou-
HIGH llAliHINGTON, |Sn.w„]
1 as the duly constituted attorney of
Titos. A. Edison, [Skal]
Ixllibit
JAY GOULD, [Skai„]
hand paid. did receipt where-
i hereby :i.'si"iit transfer Mini
I IVilie. Telegraph Company,
• ami all rigliu< titlf ami in-
and ipmdruplex telcgrnplas
written instruments fef|iiirml
■ .-aid Harrington as assignee
f (Item, and may mav Imve or
leltei'S patent issued or to he
s as are menlioned in the, stud
ny improvements on (tie said
of them, and also all other
ell I now have under or by
aid, do hereby give t)„. S:ii< I
iy of saiil inventions ami inn
to he made, and for all sueli
he necessary or rei|nisite for
; said company, its sneeessors
title to all sueli Inventions ami
I exercise under the said writ-
seats had not been made,
die said eompany to appoint
:l as the attorney of the said
do all those things and nets
In prcscnca of
The word 11 are” written over an
erasure on the third line, second •
page, before execution.
Olln J. Ci.auson.
Statu of Nkw Yoiik, )
City and County of New York, j '°s'
On this I'.ltli day of .Inly, 187o, before mo personal!
came Jay Gould to me known and known to mo to he tl
individual described in and who executed the foregoing ii
stnnncnt, and acknowledged that he executed the same f<
the purposes tin t let el
OLLN J. CLAUSON,
Notary Public,
N. Y. Co.
10
1!
[Ex. 18.]
Exhibit 13.
OF THE CITY OK NEW YORK.
Tun Atlantic 'I'm-- j
wjainst
GEORGE B. l’RKBCOTT, TlIB WEST-
khv Union Tm-korhi'h Com-
rany, Lkmvki. W. SWHtBM. ^4
Thomas A. Edison.
The plnimiiV respect Hilly shows to this Court ns follows:
Y'Yrai. — The plnintilV is n corporation, duty incorporntcil
283 under Ihc laws of the State ol Now York, for the purpose
union" oilier things, of constructing and operating lines ol
lelei-raph within the United States, n„J of acquiring such
property ns shall he m eessary or proper for that purpose,
mid il is now and has lor many years, been engaged m the
business ol‘ ojh: rating telegraph lines within the United
States,
Second.—' Thu defendant, The Western Union Telegraph
Company, is a corporation incorporated under said laws and
284 lor the same purpose, and has ils principal ullico in the City
of New York.
77imf.-On the first day of October, 1870, the defendant,
Edison, made and entered into a eontiucl with one George
Harrington, of which a copy is annexed hereto and l.wdo
part of this complaint, marked A.
Fourth. — In pursunuce of said agreement, as this plnintill
fully to fulfil and enrry out thu said agreement, the sai
Edison, on llm fourth day of April, L871, executed and di
iivered to said Harrington a power of attorney and assigi
merit, of which a copy is annexed, marked B.
Fifth. — At tlie lime of the execution of such power <
attorney, which was duly recorded in the United State
Patent Office May (i, 1871, Lho defendant, Edison, as tli
plnintill' irt informed ami believes, hid arranged in Ids min
the process ami means, the combination, powers and nu
eliinery embodied in tiie applications hereinafter mentioncc
and had developed them so far that lie was eonlidont o
ultimate success, ami pursued ids investigations and uxper
muiits with thu assistance of said Harrington with energ
and industry, and in a shop in Newark, ccpuippcd and fu
uislied nt said Harrington's expense.
Sixth. — On or about the lirsl day of January, 1S75, tli
said George Harrington, on his own behalf, and as attorne
for the said E lisoa, executed and delivered to .Tny Gould tli
doed of assignment, bearing date that day, of which a uop
is annexed hereto, m-irko 1 0; and on the ninth day c
.March, 1875, lie executed and delivered to said Gould tli
deed of assignment, of which u copy is annexed, markei
1), both of which were recorded in the Unite 1 States i’uteii
Office .March 3L, L875; and the said Gould did, in consul
oration of the said assignments, pay and deliver to the sail
Harrington a valuable and adequate consideration for tli
same; and the said assignments, us this plaintill'is informe'
and believes, wore about thu time of their execution ratiiiOi
and approved by said Edison.
IH Seventh. — On the fourth day of January, 1875, tlio sai
H§ Edison, in consideration of tin: sum of thirty thousand do
Eg hit's, which was paid to him by said Gould, did execute tin
H deliver to said Gould the irrevocable power of attorney, r
fit which a copy is hereto annexed, marked E, and the sail
Eighth.' — On or about the 19th May of July 1875 the
„li(1 J,1V Gould executed and delivered to tins plamtdl, lor
■, valuable consideration, an assignment of all liis interest in
duplex or quadrnplex patents, or applications for patents
relating to duplex or .p.adruplex lelego-apby tvbieb ass.gn.
meat was, on the eleumth ilmj «/ Mmh 18 l ir
record in the United Slates.l’atonl Olliee, None ol the in¬
ventions therein described were made for the Gold and
Stock Company. Duplex and ipmdruplcx telegraphs, so
called, are a mode of telegraphy by which electric currents
can bo transmitted in the same directions and in opposite
directions at the samo time, over the sumo wire; and the
number of messages which in a given time can be trans¬
mitted over the samo wire is thus more than doubled, and
the spued with which messages received for transmission can
be transmitted is in like manner, and to the same extent, more
than doubled. 'L'lie system of duplex and ipmdruplex tele¬
graphy is and has been since L870, therefore, properly eallud,
and is, in fact, a system of fast telegraphy, and is especially
adapted to be used in connection with, and is, in fact, ap¬
plicable to the automatic system of telegraphy.
Ninth.— On the nineteenth day of August, 187-1, the said
Edison executed seven applications for letters patent of the
United States of Ameriea for curtain improvements in duplex
telegraphs, which said applications .were dated that day,
and were numbered respectively 04, 90, 9(1, 97, 98, 99, 100
and the same were thereupon lilod in the United Stales
Patent office. And the said Edison, as this plaintiff is in¬
formed and believes, at the same time complied in all re
speotx with ihu provisions of the law in such case made and
provided.
lenlh.— On the nineteenth day of August, 187*1, tin
the said defendants, l’rescott mill' die W
jpnjili Company, he enjoined ami rostraini
nit of diis Court from fnrlhcr jmitwctUHig d
s, or any of them, ami from selling, ineiiinl
phig their interest in the invenlions anil inij
vibed therein except to this plaimilV.
the (lefcnilant, Edison, may he required ti
limber inairument.i ns may lie necessary to
IV in oh min Idlers patent of die (.lulled Sin
ions ilcscrihcil in saiil applications.
the plnimilV may have such other or furtlic!
i may he just, together with the costs of t
McDANJKL, LUM.MJS & SOUTH KH,
Plainly f* Alto
County of Sew York, ss.
s T. Eckcrl, being duly sworn, says dial
of the above nanieil nlaintilV: that he lias r
clay of April, 1870, j
l’. IT. Hani.on,
Salary Public,
Kings County.
EXHIBIT A.
THOMAS A. RIHSON wmi GEORGE HARRINGTON-
October 1, 1870.
Thii Indenture, mittle this first day of October, ono thou-
amd eight huudrud and seventy, by and between Thomas
t\. Edison, of -Newark, in the State of New .Jersey, of tho
irst part, and George Harrington, of the City of Washing-
on, District of Columbia, of the second part,
Witnessed!, That for and in consideration of one dollar,
mid in band, one to tho oilier, tho receipt of which is
lereby acknowledged, and of the mutual trust and confi-
lcnco ivliieh said parties have in each other, do eaoli cove-
unit and agree will! the other as follows :
First — .That the said parties as above named will be part-
icrs as inventors and as manufacturers of all kinds of
iniehinery, instruments, tools, battery materials, anil ull and
vhatsoever may be required by the various systems of tele-
jrapliy, and of all such other machinery, instruments, tools
ir articles or tilings, die manufaeturc of which may bo
affixed their simiIs, in l lit* City of Now York, on the day
ami lialo first above written.
GKOIIGK HAIUIINGTON, [seal.]
THOMAS A. EDISON, ’ [seal.]
In presence of
J. W. TltEAllWEI.L,
Cl IAS. S. IlUililKSO.V.
City ami Counly of A ew York, ss.
On tli is 31st day of December, 1870, before mo person¬
ally appeared George Harrington and Thomas A. Edison,
both to me personally known, and known by mo to bo the
individuals described in and who executed the within in¬
strument, and they severally acknowledged to mo that they
executed the same.
C11AS. II. KLTCllKi,,
.Votary J'nltlic,
in and for New York City and County.
EXHIBIT B.
THOMAS A. EDISON AN D G EOilGE HAltlHNGTON
Dated April i, LS71.
Whereas. I. Thomas A. Edison, of the City of Newark
itlil'ully fiiltilluu sill of tliu oovunsmts iiml stipulations
ii to hy him ; Now, therefore, bo it known, that in
lion thereof, ami ut the stun of one dollar to 0m
mid, I, Thomas A. Edison, of tlm City of Newark,
Now Jersey, do by these presents hereby assign,
ami convey to him, the said Harrington, two thirds
St of all iny said inventions, including therein all
ntions of mechanical or copying printers, and of all
nts for all such inventions and printers, whether
issued, applied for, or to be hereafter applied for,
ill ami whatsoever of mv inventions and improve-
that my said attorney may or shall do in the pre
fully as if done by me in person ; and request the
sinner of Patents to recognize him as such nltornc
In witness whereof, I have hereunto set my It
a llixed my seal, in the City of Newark, this fottrl
April, eighteen hundred and seventy-one.
T. A. EDISON, [
In presence of
A. D. CouuitK,
A. 15. Gandhi;.
SAMUEL A. DUNCAN,
Acting Comm'r of Patent k
GKOHCIK IIAUIUNC.TOX TO .JAY COULD.
Whereas by an indenture bearing 'Jute tint 1st day ofOeto-
• A. D. 1870, Thomas A. Edison, of die City of Newark,
to of New Jersey, aiuUi corgi! I lurringlon, of the City of
iishiuglon, District of Columbia, became copartners and
lit owners as mamifaetiirers ami inventors, for a period of
o years; nwi/ whereas, the tilth section of said indenture pro¬
les that thesaid Kdison “shall admit soother parlies toanv
lireel or indirect interest in or tonny inventions or improve-
nents made or to ho made by him,’’ except as thereinafter set
tli ; but all such shall enure and belong to the said i i erring-
a and Kdison in the proportions as set lord) in section sixth
said indenture; ami whumn, the sixth section o( said
denture provides that the proportions referred to in sco¬
rn llflli shall he one third to said Kdison and two third
said Harrington, all of which will more fully appear by
feronce to said indenture, a copy of which is hereto
inched ; amlwhertas, in furtherance of the provisions of said
idculurc, and the purposes of said copartnership, tho said
lid Thomas A. Edison, by an instrument in writing, bear-
ig dale the fourth day of April, A. 1). 1871, duly recorded
t the “ U. S. Talent Oflieo the 0th of May, 1871, in Liber
armieton, acting lor myseu,
il attorney rtf sniil Thomas A.
> ami empower llio said Jay
usfiij'iii*, as a vested right con-
id Edison for all tli e necessary
els, and whatsoever may lie
d States Jiiitenls tor any of said
i, whether mmle or to lie made,
aments as may be neeessiiry or
lid Jay tiouhl, his executors,
1 and complete title to all such
s; hereby substituting and ap-
or such other poison as he may
ml only attorney, irrevocable,
s 1 am authorized to do in the
\pril -lth, A. 1). 1871, before
id investing him, the said Jay
.1 applies to duplex and quad-
nolo, with all the power in the
• me in person ; and requesting
it to recognize him as the duly
Edison and Harrington in all
ling to duplex and cpiadruplex
I’oi'thcless, that il is distinctly
ulated that this disnosition, sale
GKO. II AHU1NGTON, (h. s.]
constituted attorney of
THOS. A. EDISON, [i. s.]
in presence of
W.M. P. Cox,
D. Douskv.
Memo.— Wltmt “ rpiadruplex " is above ineiitioned in t
foregoing paper, it was intended to be preceded by t
words “ duplex and,” where these have been aceideuta
omitted.
GKO. 11 ADDINGTON, [u s.]
for myself, ami as the (Inly
constituted attorney of
THOS. A. EDISON, [u «.]
i-i Deceived for record March hist, 1875, and record
2 In Liber, D, 10, page 160, of Transient of Patents.
In testimony whereof, 1 have caused the seal ot I
**■ Patent Olliee to be hereunto allixcd.
e= [,„ S.] KblilS SPEAli,
£ Actiny Commissioner.
exhibit d.
RRINGTOS AND THOMAS A. EDISON
WITH JAY GOULD.
March 9, 1875.
i the first day or January, one thousand eight
ivcntylive, I, George Harrington, of the City
, District of Columbia, acting for myself, and
intituled attornev of Thomas A. Edison, did
eliver unto Jay Gould, of the City, County
ew York, a certain deed of assignment:
, In said deed, wherever the word " quadrit-
[ten 1 intended to precede the satno by the
: and," which said words " duplex and " were
nitted by me in the places referred to, and
and meaning of the said deed was to convey
tie and interest of myself and the said Thomas
to, or in any manner pertaining to duplex ns
tplex telegraphs :
», To prevent difficulty hereafter, it is expo-
:l said omission :
fore, this indenture witnessed! that 1, the said
igtmi, acting for myself and as the duly con¬
ey of Thomas A. Edison, in consideration of
and of one dollar to me in hand paid by the
Id, have granted, bargained and sold, and by
i do grant, bargain, sell, assign, transfer and
lay Gould, of the City of New York, -State ol
ns executors, administrators and assigns, sill
5 of said Edison known ns duplex and quad-
aphs, together with all the rights, title ami
in and thereto of the said Thomas A. Edison
er thereof, and all the rights, title and interest
tlio full end of the term ns well as the renewals
tensions thereof, for which letters patent have been
y hereafter be granted, as fully and entirely as the sa
uld have been, or could bo held and enjoyed by s:
Ison or said Harrington, or either of them, had this
nment, sale and transfer not been made.
<\ml I, the said George Harrington, acting lor tnvst
I ns the lawfully constituted attorney of said Thomas
ison, do hereby authorize and empower the said ,7
uld, bis administrators and assigns, ns a vested rig
tferred hereby, to call upon said Edison for all t
tessary specifications, drawings, model*, and whatsoev
y be necessary to obtain United States patents for a
said inventions and improvements, whether made or
made, and for all such further assignments as may
essary or requisite to vest in the said Jay Gould, I
icutors, administrators or assigns, full and complete ti
all such inventions and improvements, hereby sub.'
iag and appointing the said Jay Gould, or such otl
son as be may indicate, my true, lawful and only atti
•, irrevocable, with power to substitute, as I am autlu
d to do in and bv a certain instrument in writing, beari
e April -fth, A. IV 1871, and executed and delivered 1
said Thomas A. Edison to mo, hereby divesting mys
I investing him, the said Jav Gould, in all that rclal
I applies to duplex and qiiadrnplex telegraphs, and
re, with till the power in the premises as if exercised
in person, and reuuodimr the Commissioner of I’atot
GKO. UAHKINGTON, [1.. a]
For myself, o ml as the duly constituted
attorney of
THOMAS A. EDISON, [i,. s.]
presence of
C. B. HAninsfiTos,
Seaton Mux non.
deceived for record Mnrcli 81st, 1870, and recorded in
her D, 19, page 10-1, of Transfers of Patents.
In testimony whereof, I have caused the seal of llio Patent
lliee to be hereunto affixed.
ELLIS Sl’KAIt,
i. s.] Acting Commissioner.
Ex’d. F. M. M.
EXHIBIT E.
THOMAS A. EDISON WITH JAY GOULD.
January 4, 1870.
Know all men by theso presents, that whereas, I, Thomas
t. Edison, of Newark, in the State of New Jersey, linvt
nt unto Jay Gould, of the City, County and £
w York, full and irrevocable power and authority
ign, transfer and set over unto any person, pen
porntion, any rigid, title and interest in or to an;
said inventions or improvements relating thereto
3r under any letters patent which may be grnulc
my time may belong to me, relating to any or all
editions or improvements. And I do hereby alsog
nl to said Jay Gould full and irrevocable pow
hority to give or grant, any license or license!
under any or all of said letters patent, or ill or:
any or all of said inventions or improvements.
I do also horuby authorize and empower the said Ji
Gould to appoint any substitute or substitutes, tit bis d
crolion, to do and perform all or any of the nets herd
authorized ; and 1 do, in sueli ease, hereby confer upi
such substitute or substitutes oneh ami all of the powc
which I have hereby eonerred upon said Jay Gould,
which may by him be delegated to such substitute or sti
387 stitutes.
In witness whereof, I have hereunto set my hand a
seal, the fourth day of January, one thousand eight huudr
and seventy-five.
THOMAS A. KDISON, [h. s.]
In presence of—
The words "lull" and “irrevocable,”
interlined between the 2d and 3d, the Mth
and loth, and 21st and 22d lines of the
second page, and between the 2d and 3d
888 lines of the -1th page, before execution.
Ol.I.V J. CI.AUSON,
Aimtuit Kix.N-tuit.
State of Kew Yoiik, 1
City and County of A rew York, j ss-
On the fourth day of January, 187f>, before mo persona
dividual
aS«* 1,1 "•■•'ling, ami all ml proiitN Hl.nl] be equally tllvitl
between the parlies hereto.
Sij:lli. — The cove . Is and provisions of' tliis ngreomo
binding either of the parties hereto, shall also bind I
executors, administrators ami assigns,
In witness whoreol, the saitl parties have hereunto i
their hands and seals the chi)’ and year lirst above ivrittci
THOMAS A. KOI SON, [r„ s.]
GEORG E B. PRESCOTT, [i, s.]
Witnesses —
Hahom) Sniiniir.L,
Lkmuei, W. SKItltKU,.
EXHIBIT G.
LETTER OF REVOCATION OF EDISON.
Newauk, N. J., Jan. 23c/, 1875.
Commissioner of Patents.
Sin: There are on lile in your ollioo certain nppheatio
or patents in my name, as solo inventor, accompanied wi
^request to issue the patents, when allowed, to myself at
Seorgo B. Prescott.
1 made this arrangement with Mr. Prescott under s
irroueous impression.
On the 1st October, 1870, I made a copartnership co
from the mid assignment ami power of attorney. 1 there-
fore withdraw my request for the issue of patents for dm
|jlcx nnd qundruplex transmission to Edison mid Pro-untl,
ind unite with George Harrington in his petition, this 'lev
lilod in your oflice, requesting the issue of the letters pntunl
to George Hnrrington%und myself, in tlio proportions set
[brill in the power or attorney nnd nssignment of April -Ith,
1871, nnd the contract therein rceitod.
Respectfully yours,
THOMAS A. EDISON.
PETITION OP HARRINGTON, THAT’ PATENTS
MAY ISSUE TO HIMSKhK AND EDISON.
Washington, January 2St/, 1875.
'Jo the Commissioner of Patents.
Your petitioner, tv citizen of Washington City, District of
Columbia, prays :
That letters patent bo granted to Tlios. A. Edison, of the
City of Newark, State of Now Jersey, and to your petitioner,
as his assignee, for the inventions described ns follows :
No. 94, improvements in duplex telegraphs, dated Au¬
gust 19, 1874, and filed September 1, 1874.
of tlie fn in tli mill fifth
ic eighth article, begin-
undruplex telegraphy,”
cle.
f the nintli article, ox-
law, referred to in said
of any fees or moneys
ns iliero menlionctl, it
iof, tliat snoli fees and
and monuys, wore paid
ncc of provisions of tlie
son, hereinafter .referred
i, and lliat the amount
in of $ - •
the lilth day of August,
lento and deliver to the
f that date referred lo in
id Kdison had the power
id agreement was and is
n the parties thereto, ac¬
hat such agreement was
disou in violation of any
1 Harrington, or without
s of tlie eleventh article,
i article ending with the
s," in the loth folio, ex¬
ilic seventh article hereof;
rnmtion sullicient to form
twelfth and fifteenth nrti-
he form set forth in Hx-
tlio defendant alleges, on its
ir to the 10th day of , January,
cuts had not considered the
; hat the said G'om-
nts marked G and
rv, 1870, did first
teentli articles just referred to, tho def
information and belief, that prior to th
1875, the Commissioner of Patents h
applications referred to in the ninth i
anything, either as to the character
therein described or as to the invento
issue of letters patent for either of the
niissioner, after receiving the instru
II, and after the 10th day of .1
proceed to consider the applications til
to in tho ninth article, and did, on or
March, 1875, render his deeision as si
annexed to the complaint.
Eighth. — Denies the allegation in tho thirteenth nrtiolo
that tlie issuing of letters patent to Prescott and Kdison
would work irreparable or any injury to the plaintilf, or
any injury which could not be compensated in damages,
and tho allegation that said improvements expedite the
transmission of telegraph messages , and also the allegation
contained in the last paragraph of said artielo relating to tho
defendant Sorrell.
was exeouted under the advice ol counsel, who was also
counsel for this defendant; and, upon its information and
belief, denies that said agreement was executed under the
advice of counsel for Prescott, that the agreement between
Edison and Harrington did not include duplex and quail
ruplex telegraphy, or either of them ; or that Edison was
misled into executing tho said agreement botween him and
Prescott by any such advice as is alleged. This ilolundaiil
denies, also, upon its information and beliuf, all tho othoi
allegations ol thu fourteenth article, except that Prescott was,
thn time , -elm-rod to in the 21st folio, the electrician ol
i ilny of January; 18715. Ami this
up to tlio timo of llio agreements
.jnuftcr sul forth ; ami alter thuisu
hint anil Edison ami Prescott donil
11 of Edison's experiments, improve-
miieetud with duplex orquudruplex
i uml in pursuance of sueh terms of
t with Edison ns are tibovo set forth,
agreement the said Edison began his
t the month of February, 1878, and
me to time during the greater part of
winter of 1878 and 187-1 ; and at his
t the mouth of February, 187-1, ami
lie defendant furnished to him larger
10 use and service of its lines, opcr-
uhinists and other employes, uml
-lance of its elcuirician, George 11.
(fits period and before September,
j certain of the desired improvements
d, from time to, time, reported them
placed them at its disposition,
st day of June, 187-1, the defendant
igostion. entered into an agreement
sgcott, whereby it was agreed tunt the
nler his agreement with the defend-
e prosecuted by said parties together,
their own motion and independently
respects. And in or about June, 1:
Prescott agreed jointly with this di
the conditions of Edison's ngrceti
From about the 1st day of June,
thence until after the lfttli day of t
mice of their said agreement, Edison
jointly to uso the facilities provide*
already mentioned, and in view at
same agreement with this defendant
between defendant and Edison indi
ties mill assistance required by said
of thoir experiments, m pursuance
with this defendant, were furnished
large expense.
In thccoursu of the said experii
and afterwards by him jointly witli
able inventions in and improvumciil
and in the discovery of 'oilier nu
mission, ami particularly of the so t
made by said Edison, and among tl
improvements described in the nppl
both inclusive, which are referred u
the complaint; and during die mo
October, 187-1, machines enibodvii
and particularly the quadruplex,
by defendant '0 sucIi in vi-nlions of Edison, uml its t
tership of them, wort* at or about the said dates |mbliol.y j ■
ouuanl, and were tl.eit wetl known, <-spccinil.y to all
suns interested in business and science, and
bmlant savs, upon its infonnation ami belief, tliaf limy j;
re limit known to this plaintilf ami lotieorgo Harrington.
[>l,e experiments of said parties being continued from tire
es last named, through die fall and winter of 187-1, on
about I lie lOtli day of December of that year, the said
ison, in view of the inventions already made by hint tor
s defendant, and some of which lie had already put into
bndtml’s possession ami practical use as aforesaid ; and
virtue of his agreement aforesaid witlu Ihe delhndtiul, and
on the claim that, lie and the said Prescott were rapidly
, -eloping still further improvements and inventions in
incetion with duplex ami tpiadt itplex telegraphy, which
;v would stum be able to furnish to defendant lor prac-
al use in its business, asked of the defendant tin advance
the price which would la: due from it to himself and ;
escotl, for the improve . tils ami inventions and lcltcrs
tent lln.-rclbr, under tin- agreements aforesaid; uml there-
on, in virtue of said agreements, and on neeouut mul in
rl. payment of tin: price to he paid by the dclcmiant, the
net amount of which was to be still lixeil by explicit
reement, or by arbitration, as aforesaid, on said Itjtli day
December, 187-1, this dclemlant paid said Edison the sum
$5,000, which he accepted as such part payment, and
creupon executed, under his hnud uml seal, ami delivered
tile defendant a paper, a copy whereof is hurcto annexed,
nrked Exhibit A. This payment was not mitdo on tie-
tint of, and had nothing to do with the order of twenty
tieliiues referred to tit the 2oth folio of the complaint, but j|
as long prior lliereto. 1
And on or about the
day of January, 1875, tlio
lofondnnt accepted the second of the propositions nninod in
aid writing of December SOtli, 187-1 ; and by the paper
luted the ltllh day of January, 1870, a copy ivhorcof is
lercto annexed mnrkcd 10, and mi tbnt day the defendant
lotificd Edison 'and Prescott of ils aeeeptaneo of that propo-
lition, as is more fully set forth in said Exhibit E.
On the 20th day of January, 1870, the defendant Pres-
lott, by writing dated that day, whereof a copy is hereto
iiinexcd, marked Exhibit E, notified defendant of his rendi-
less to make a formal assignment to the defendant of all bis
mil Edison's inventions and letters patent therefor, relating
o duplex and quadruple* telegraphs, and including the in¬
dentions described in the applications Nos. 01 to 100, both
■■elusive, anil has always since that time been and now is
willing to execute all necessary assignments and instruments
ovest in the defendant all his and Ellison’s interest in all
)f the said inventions and letters patent.
A copy of the said letter of J anuary 10th, 1870, was, on the
20th day of January, 1870, handed to the defendant Edison,
ivho thereupon refused to make or to join with Prescott in
my assignment to this defendant of any of such inventions
or letters patent therefor. And this defendant alleges that
Edison's violation of his agreement with it was wrongfully
instigated and procured, in the interest of this phiiutill', by
Jay Gould, who being in December, 187-1, and for a long
time before and ever since tlmt time, it veil huge stockholder
and director of the plaintiff, anil in control of its policy and
business, for the purpose of defrauding this defendant of the
improvements and inventions aforesaid of Edison, and espe¬
cially of those involved in this suit, anil of depriving it of
the boncdl thereof in its business, and of securing llio same
to its competitor, this pittimiff, did induce said Edison to
break off all illations with this defendant anil Prescott, ami
to repudiate anil violate his agreement with them respect¬
ively ; and in execution of this scheme the said Gould alone,
and said Gould and Edison wrongfully conspiring together,
though they well knew all the matters in this article set
forth, and that they were true, did devise the false grounds,
and so known to them to be, and especially those based on
the alleged instruments set forth in plaintiff's Exhibits A, B,
O and D, upon which they and this plaintiff' now found their 44,
protended title to the inventions involved in this action.
On tho 28th day of January, 1873, the defendant Edison,
having, over since said 20th day of January, kept himsolf
concealed, so tlmt no tenders of any sort on the part of this
defendant might bn made to him, this defendant de¬
manded of Prescott a conveyance to it of tho interests
agreed to bo conveyed to it by said Prescott and
Edison, anil then tendered to him tho money stipulated for
by the offer of December 30, and offered to execute a proper
agreement securing the royalty also provided for by tlmt 44
offer ; thereupon the said Prescott declared his willingness
to sign and execute all necessary instruments to scauru to
this defendant the inventions aforesaid anil letters patent
therefor, and to accept said money anil ugreomont for tho
royalty ; but that as tho agreomont between him and Edison
required the |ommg of Edison m suuli assignment, and
Edison refused so to join with him, no such instrument
eoulil bu effectually imidc.
Fourteenth. — And thu defendant further says, upon its in¬
formation an I belief, that before the dates or making at any
time of any of tho protended agreements butivoen Edison and
Gould or Harrington and Gould, which are nllogcdin tho com¬
plaint, the said Gould was fully informed of Edison’s then
existing ugreeiiunt with this defendant, and also of his
agreement with Pro-mott, all as hereinbefore set forth ; and
of all his relations with this delemlimt and Prescott, in
virtue of said agreements; and was also informed, at or
about the several dales of such events, of the payment* to
himself and Prescott of thu respective sums of §3,000, on
account of the price to bo paid by this defendant for his
inventions am! patents; and of tho execution and delivery
of tho instruments marked Defendant's Exhibits A, B, 0, D
and E, copies of each of which were also delivered or ex¬
hibited to said Gould, at or about their several dates ; and
also, that this ilofeuilant was, by virtuo of its said original
agreement ivitli Edison, and of the subsequent agreements
between him and Prescott, the owner of inventions in duplex
and quadruplox telegraphy made since January, 1873, and
•i-1
ami r.inson, or •Minor oi mem, <u any midi m.-w minim.,
falsely |>u i| 'tutiiijr in have been cxi culcd on nr about Janu¬
ary l' 1875, or such inslrntucni, said to bo dated March 0,
1875, ns are referred to in the sixth article nl' llio complaint ;
ami bofori: the execution nr delivery in him by mM Edison
ol' any such instrument as is rel’crrcil tn in the sevonth
article ol' tlio complaint; ami before he paid any money
cithor to said Harrington or Kdison in consideration of
either of such instrument*, or on account of the inventions
or patents in eilhor of said instruments referred to or alleged
in the complaint.
And the defendant further says, upon its information and
belief, that the same things so known to said Gould were
also known to this plaintill'aud its executive officers before
December 81st, 1874, and before the execution or delivery
to said Gould of any such instruments as arc referred to in
the sixth and seventh arlicles of the complaint, and before
the delivery to it by said Gould of any snob instrument
purporting to lie dated July I'd, 1875, as is referred to in the
eighth article of the complaint ; and before the delivery to
the plaintiff of any other instrument which purported to
convey to it any invention of said Kiii-on, relating to duplex
or quadruple# telegraphy, or the inventions described in
the applications Nos. 04 to 100, both inclusive, or any of
them, and before the payment by phdntill'of any moneys or
valuable consideration on account of any of such inventions
or patents, if any such payments were ever made by the
plniulillj which the defendant denies.
Wherefore this defendant demands judgment that the
complaint be dismissed.
PORTER, LOW RET, SO REN & STONE,
Atl'ijs for IE U Tel. Co.
Sworn to before me, this 18th )
day of May, 1870, (
If. hr. IbAiGir,
Notary Public,
N. Y.
WfLLM. ORTON.
Co.
EXHIBIT A.
PRELIMINARY RECEIPT.
N. Y„ Dec. 10, 1874.
• lE/icrais, Thomas A. Edison and George B. Prescott ni
the inventors of certain improvements in telegraphy relntin
to duplex and quadruples telegraphing, for which letlc
patent of the United States have been applied for by sai
Whereas, said Edison and Prescott liavo agreed to assijj
all their right, title and interest in and to said invention ni
loiters patent to the Western Union Telegraph Compile
provided the terms of pnvmcnt for such assignment at
transfer shall be snlislaetbrily adjusted between the sa
parties and the said telegraph company.
I, the said Thomas A. Edison, hereby acknowledge tl
receipt of five thousand dollars tn me in hand, paid in pa
payment for my interest in the said assignment and trnnsfui
Witness my hand and seal this tenth day of Deeembi
1874.
Witncss-
A. R. Biiewkh.
THOMAS A. EDISON, [r„ s.]
118
[Ex. 18.]
City and County of New York, ss.
Oh this 21st day of January, 1875, bcforo mo personally
appeared A. 11. Brower, to mo personally known, and
known to mo to he the subscribing witness to the foregoing
instrument, who, being by mo duly sworn, said: That he
resided in the City of Brooklyn, in the State of New York;
that lie was acquainted with Thomas A. Edison and knew
him to be the per.-on described in and who executed said
instrument, and that he saw him execute and deliver the
same, anil that he acknowledged to him, said A. R. Brewer,
that lie executed and delivered the same, and that there¬
upon he, said A. 11. Brewer, subscribed his name as tt wit¬
ness thereto.
IT. Jl. 1IAIGU.
Notary Public.
- N. Y. Co.
EXHIBIT B.
PRELIMINARY RECEIPT.
Nkw Yokk, January 10, 1876.
Whereas, Thomas A. Edison and George B. Prescott are
the joint owners of curtain improvements in telegraphy re¬
lating to duplex and qimdrupl.x telegraphing, for which
loiters patent of the United Stales have been applied for by
said Thomas A. Edison ; and
Whereat, said Edison ami Prescott have agreed to assign
all their right, title and interest in and to said inventions
and letters patent to the Western Union Telegraph Com¬
pany, provided the terms of payment for xuuli assignment
and transfer shall be satisfactorily adjusted between the said
parties and the said telegraph company :
I, the said George B. Prescott, hereby acknowledge thu
receipt of live thousand dollars to me in hand, paid in part
payment for inv interest in the said assignment and transfer.
Witness my baud and soul this sixteenth day of January,
(Signed,) GEORGE B. PRESCOTT.
Witness —
(Signed,) Ghiuiit Smith.
110
[Ex. IS.]
R. H. EocnESTF.it,
Treasurer :
On the delivery to you of this paper, pay George B.
Prescott the sum of live thousand dollars ($5,000).
(Signed,)
WILLIAM ORTON,
President.
Jan. 10, 1876.
Eeeoivod live thousand dollars.— Low York. January
10th, 1876.
(Siguod,) GEORGE B. PRESCOTT.
Paid Jan. 10, 1876, by
E. II. ROCHESTER,
Treasure
EXHIBIT C.
Hon. Wir. Ortox, ‘108
Prest. Western Union Tetgh Co.
D’r Sir — Your company has over 25,000 miles of wire
which can now bo profitably “ Qundrnploxcd."
Considering these 25,000 miles to he nlrcndy duplexed,
the quadruplex will create 50,000 miles additional.
Eor all our patents and cll'orts in protecting the company
in thu monopoly of the same during their life, wo will take
l-20th of the average cost ot maintenance of 50,000 miles
of wire for seventeen years, one-third down and the bnlanoo 40-1
in yearly payments during tho above mentioned period.
" Half of such payments to cease the moment any other
person shall invent and put into practical operation, n quad-
ruplux (not infringing our patents), upon a circuit of TOO
miles in length."
Yours, etc.,
(Signod,) TIIOS. A. EDISON,
GEO. B. PRESCOTT.
[Kx. 13.]
Two propositions :
1st. Wo will take twenty-five thousand down and twenty-
five thousand in six months for all patents, ami a royalty
on quadruplox of $100 per year for each eireuit created.
2d. We will lake twenty-five thousand down
patents, and a royalty of $233 per year for euel
Thomas A. Edison, Esq., and Geoiiob B. Piiesco'it,
Esq.
Gentlemen — Referring to thu negotiations and arrange-
407 inonls heretofore mailo between you and the Western Union
Telegraph Company, for the sale and transfer to that com¬
pany of all your patents relating to the duplex and quad-
ruplex telegraphy, subject to* definite ascertainment of the
compensation to be paid, and especially to thu two oilers in
writing made by you on or about the 80th day of December
11 1st. Wo will lake twenty-live thousand down and
" 25,000 in six months for nil pntonts, and a royalty on
4IIS 11 duplex of $100 per year for each eireuit created."
11 2d. We will take twenty-five thousand down for all
•■patents, and a royalty of $223 per year for each eireuit
“ created."
1 hereby notify you, on behalf of the Western Union
Telegraph Company, that the proposition for compensation
above quoted, and by you marked ‘'2d," is hereby accepted
as made, and the company is ready to close the business at
121
[Ex. 18.]
called for, upon recciv
transfers of the said pi
Ei.ecthician's Dei'ahtmknt. 4
AVcstcrn Union 'Telegraph Company,
GEORGE B. PltESCOTT,
Electrician.
Dear Sir — Your favor of the lfitli instant, accepting the
propositions heretofore nindo by Thomas A. Edison and 471
myself for the sale to tho Western Union Telegraph Company
of corlnin inventions, and all our right, title and interest of
overy character in, to, under and connected with all letters
pntentof the United Slates, which may ho granted to us for
improvements in duplex and quadruplox telegraphs, anil fix¬
ing the compensation to he paid in accordance with our pro¬
position nindo and marked “2d," on or about tho 80th day of
December, came duly to hand ; and, in reply, I have to say
that I am ready to unite with said Edison in conveying all
such patents or inventions, or to nssign my interest sepa- 4.72
ratoly, if 1 may lawfully do so.
Yours, very' respectfully,
GEORGE B. PRESCOTT.
Geoiiok 15. PllKSCOTT, i lliplciiulccl, I
174 George 53. Prescott, for Ins answer lo the complaint
herein :
First. — Ailmils thu allegations contninoil in the first ami
second articles thereof.
Second. — Denies any knowledge or information sufficient
to form a belief of any of the allegations contained in tho
third, sixth and seventh articles, and in that part of the
eighth article ending with the words “ Gold and Stock Com-
j.75 pany,” in the 9th folio.
Third. — Denies all the allegations of tho fourth and fifth
articles, and all Lite allegations of the eighth article begin¬
ning with the words 11 Duplex and Qnndrnplex Telegraphs,"
in the 9th folio.
Fourth. — Admits tho allegations of the 9th article, except
that so far ns the provisions of law there referred to required
the payment of any fees or moneys in connection with tho
applications there mentioned, lie says that the truth is that
470 suo'' fccs ll,’d moneys were paid by himself, and in pursuance
of the agreement between himself and Edisun hereinafter re¬
ferred to, and not by tho delendnnt Edison, and that tho
amount of such fees and moneys paid by him was tho sum
of$
Fifth. — Admits that on the 19th day of August, 1874,
Sixth. — Domes all the allegations of the eleventh article,
and of that part of the thirteenth article ending with tho
words, “ said several improvements,” in the 15th folio, ex¬
cept so far as they are admitted in the seventh article hereof;
and denies any knowledge or intonnanon sufficient to form
a belief of tho allegations of the twelfth and fifteenth nr-
tieles, except that instruments in tho form set forth in Ex¬
hibit G and H respectively, were, prior to tho 21st day of
March, 1875, presented lo the commissioner of patents.
Seventh. — As to the allegations of tho oloventh and thir¬
teenth articles aforesaid, defendant says, on his information
and belief, that prior to tho 19th day of January, 1875, tho
commissioner of patents had not considered the applications
referred to in thu ninth article, nor determined anything
either as to the character of thu improvements desunbed 111
them, or as to thu inventor of the said improvements, or as
to tlie issue of letters patent for either of them ; hut tho
said commissioner, after receiving thu instruments marked
G and II, and after the 10th day of January, 1875, did first
proceed to consider the applications filed by Edison, referred
lo in the ninth article, and did, 011 or about the 20th day of
March, 1875, render his decision as set fortli in Exhibit J
auuoxed to thu complaint.
IShjhlh. — Demos thu allegations in tho thirteenth article
that the issue of letters! patent to himself mid Edison would
work irreparable, or any injury to tho plaintiH', or any injury
which could not be compensated by damages; and thu
allegation that said improvomonts expedite tho transmission
of telegraphic messages ; and also thu allegation contained
in thu last paragraph of said article relating to tho defendant
piudruplex telegraphy, or either of them, or tlmt Kdison
vita misled into executing this said agreement between him
tnd this defendant by any such advice as is alleged.
lie admits that tit the time referred to in the 21>t folio lie
,vas the electrician of the Western Union Telegraph Com-
may ; that lie did pay the fees, and assist Kdison as allegetl
n subdivision 2, down to and including the words “said
nyeutiousnud improvements "in folio 2S ; that lint Western
Union Telegraph Company paid Edison $5,000 (hut not on
recount of the twenty machines referred to in the 25th folio,
rad only as in the thirteenth article hereof is more fully set
lorth), and also that the Western Union Telegraph Company
has mntmfactiired many machines embodying the improve¬
ments referred to in the lifth subdivision, and is now using
tho same, and denies all the other allegations of the four¬
teenth article.
Tenth. — Denies that before the 1st day of July, 187-1, or
at any time before tho 23d day of January, 1875, lie had
notice of the alleged agreements between Kdison and Har¬
rington, referred to in folio 21), ami says that the Western
Union Telegraph Company does claim to Im the owner of
the inventions and improvements mentioned in thu applica¬
tions there referred to, ami this by virtue of agreements
between itself and Edison, and between itself, Kdison ai d
this defendant; and that tho agreement, in virtue of which
said company became such owner, was closed and con¬
summated before tho pretended rescission by Kdison of his
agreement with this defendant, and before the instruments
G and II were filed in the United States Patent Ollice.
him under an arrangement with the defendant, tho Wcstor
Union Telegraph Company, hereinafter referred to as “ tl
company,” whereby it had been agreed that all such e:
perimcnls should bo made for the benefit of tho said eon
panv, and with thu nso of telegraphic material, apparatu
operators and otlior facilities furnished by it, and that all tli
inventions and improvements of the character above nnmci
which sh ottld result from such experiments, were made ft
and were to bo tho property of said company ; mul that li-oi
about tho winter and spring oflS78 until tho spring of 187
the said Kdison had boon at work upon such experiment
and bad made certain of the desired improvements an
inventions, while working under said arrangement with tl
defendant company.
During the month of May, 187-1, Kdison solicited tli
defendant to assist him with his skill and experience ns n
electrician, and to join him in his experiments and to wot
under his agreement with the company', and ollurod to slut
equally with this defendant the profits to be derived fro
the inventions and improvements made under such arrattg
incut, with thu company and otherwise; and it resulted fro
such propositions of Kdison that on or about the first day
June, 1874, Kdison and this defendant agreed together tli
further experiments of tho character and for the purpo
above described should he prosecuted by them jointly, at
that whatever profits should accruo from the invent ions at
improvements made by them or either of them during sm
experiments, and ineluding thu price to lie paid by tl
defendant company, should be divided equally betwci
them ; and shortly after an •.igreemout of this tenor was p
into writing and signed by each of the said parties in t
form set forth in Exhibit K, and was recorded in tho Unit
lileuentli. — And for a further a
incuts, uml especially nil of them winch related to duplex or
other modes of mnltiplo tnuisinissioii, wow being umde lor
mid wore to bo the property of the duloinhuit exclusively,
and that the dol'ondant company was to pay for nil such
|)j inventions and improvements and letters patent as tiii"lit lie
procured therefor snuh price as should lie just. ,
The terms of the said agreement between this defendant
and Kdison were communicated to the defundaiil company
at or about, their several dates, and it consented to deal
thereafter with said Kdison and Prescott jointly in reference
to Edison’s agreement with it; and litis defendant and Kdf*
son, at or about said several dates, and particularly on or
about the nineteenth day of August, 187i, agreed jointly
with the defendant company to perform nil the conditions
101 of Edition's agreement with it ; and all the defendant com¬
pany’s agreement between it and Hdison ns to experiments,
discoveries and inventions of the sort above described were
confirmed and continued by consent of all parties, it being
understood nml agreed that thenceforth the defendant and
Kdison jointly should lake the place of Kdison alotto in the
urmngement with the company.
Erem about, the first day of June, 1871, continuing up to
tlte first day of Jnmuiry, 1875, Kdison and this dclemhmt.
prosoouted together their experiments uml work in uxeuir
>92 tion of said original agreement between the company uml
Edison, and of the agreements m respect to their joint
interests above referred to ; and with the use of the material,
apparatus and lines, mid the service of operators, nmehinisis
and oilier cinployds of defendants, furnished by it on its
own promises and its own expense.
And before tins arrangement with tins defendant, and
while working for the company under his agreement ns
horoinbefore set forth, and after this defendant became asso¬
ciated with him under his agreements aforesaid, the defund-
thms Nos. fl-t to 100, both inclusive ; nnd before the 30th
day of September, 1874, lie furnished, jointly with this
defendant, to the company nil necessary drawings, descrip¬
tions, nnd specifications for experimental or practical uso by
it of apparatus embodying tlio said inventions described in
titc applications numbered 9‘1 to 100. both inclusive, anil
particularly the quadruplox invention nnd tho improvements
described in application No. I)!). And tho defendant com¬
pany, under Edison’s direction and assistance, during the
months of September nnd October, 187-1, constructed many
sets of maehinos and apparatus embodying many of said
improvements nnd inventions, and particularly the quadru¬
ples nnd tlie improvements described in application No. 09,
nnd with the lull knowledge mid consent of said Edison put
them into prnctieni uso on its lines and in its ordinary busi¬
ness, ns being its own property, nnd such machines nnd
apparatus have been so used by tho dol'endnnt company
over sinc.o that time with Edison’s full knowledge nnd con-
And defendant says, upon his infonnnlion and belief, that
till the matters aforesaid in respect to the discoveries by
Edison, and the appropriation, with his knowlcdgo nnd con¬
sent, to the use of llic defendant company of tho apparatus
mid machines, nnd the improvements and inventions om-
hndied in them ns before described, were well known to
this phiintifi'nnd to Goorgo Harrington at or about tho dates
of said several events, nnd that neither of them beforo Jan¬
uary tho twenty-third, 1875, over questioned, or claimed
anything to tho contrary, of Edison’s or of defendant com¬
pany's right to do ns they respectively hud done, as afore-
And tho defendant further snys tlint afier his dealings
with Edison began, in or about liny, 1871, mid throughout
same effect iis is set forth in folios 12, 13, 15 and 10 hereof;
and after the agreement of August 19th, 1874, this defend,
ant and Edison on the one part, and the defendant coin puny
on the other part, always dealt together on the understand-
ing „ml basis or such agreement, and at all limes, and up to
and after the 20th January, 1875, it was agreed and under¬
stood by this defendant and Edison on the one part, and
the defendant company on the other part, that all the in¬
ventions of Edison in connection with duplex and cpiadru-
98 piex iclegraphy or other modes of multiple transmission,
and especially of the inventions described in the applica¬
tions Nos. 94 to 100, both inclusive, referred to in the ninth
arlielo of the complaint, had been made Tor and belonged,
upon their making, to the defendant company, and that
Edison was bound under his original agreement, and this
defendant was bound with him by virtue of their agreement
of August the nineteenth, 1874, to secure all said improve¬
ments and inventions by proper instruments, and by assign¬
ment of letters patent therefor, when procured, to the
199 defendant company.
And this being the agreement and understanding ol all
tho parties, and there being no point undetermined between
them in respect to said inventions and improvements and
letters patent, except the ascertaining tho precise amount to
bo paid lor them ; and it having been also understood and
agreed that this should be ascertained iu due time either by
agreement of the parties, or, if that failed, by arbitration-
on tho tenth day of December, 1874, tho said Edison, and
about the sixteenth day of January, 1875, tins defendant
500 asked and received of tho defendant company the respective
payments of five thousand dollars each, in anticipation ol
the fixing of the definite price aforesaid, and on account
thereof, and then severally cxcoutod and delivered to the
defendant company the instruments, copies whereof are
hereto annexed marked Exhibits A and B.
And on the sixteenth and thirtieth days of December,
1874, this defendant and Edison submitted propositions in
writing as to the amount of such price, copies whereof are
hereto annexed, marked Exhibits O and D : and the last
ol said propositions remaining open up to the 19th
nary, 1875, and tho agreement and understanding
parties, ns to to the exclusive right and ownorshi]
company in and to all the inventions and improi
theretoforo made by said Edison connected with ditp
quadruples telegraphy, remaining ns aforesaid — on si
of January, 1875, said company accepted the sw
said propositions submitted by the oiler of Docembi
and so notified this defendant and Edison. And
fondant has, ever since that time always been and
ready to mako all proper and ccc st o ts
cure the titlo of said improvements and inventions
defendant company in virtuo of its said ngicemcn
Edison, and with Edison and this defondant.
Twelfth, — And for further answer tins defendant si
Edison had full power and right to make tho agre
and especially tho agreoment of August 19th, 1874
ho did make with this defendant ; and that neither
date, nor at any lime since tho 1st January, IS
any such Agreement as that referred to in the third
of the complaint, or plaintiffs Exhibit A, oxist 1
Edison and Harrington ; anil that no such liistruuic
mentioned iu tho lourth article of tho complaint w
cittcd by Edison, either to fulfil or to carry out such
agreement of October 1st, 1870, and that no other ngl
between Edison and any third person forbade or invi
any such agreements ns Edison made with this ilefet
herein alleged.
And tho defendant further alleges that neither
alleged agreements set forth in plaintilV’s Exhibit!
B, contemplate or uovor any inventions or improi
known as duplox or quadruplox systems or modes t
mission or any other mode of multiple ti uismission
of tho inventions or improvements described in tin
ment of August 19th, 1874, made by Edison sinco J
1873, or any of those described iu the application
bered 94 to 100, both inclusive, inferred to in tit
arlielo of tho complaint.
tlio statements which aro made in said complaint positively
aro true to iny own knowledge.
I have boon familiar for soveral years with the progres
of invention in relation to telegraphy and with the variou
systems of telography. I have for many years boon tin
superintendent and manager of long lines of telegraph, am
am generally familiar with the processes used 'for the trans
mission of messages over the same.
The statements in the eighth article of said complaint, a
to fast telegraphs and tlio duplex, quadruplcx and auto
matic systems of telegraphy, oorreotly state the use of those
and similar words and expressions, and the peculiarities o
those various systems.
T1IOS. T. JSOKERT.
Sworn to this lath day of)
April, 1870, before me, J
P. II. Hanlon,
Notary Public,
Kings Go., N. Y.
City ami County of New York, ss.
Thomas A. Edison, being duly sworn, deposes and says
I reside in Menlo Park, New .Torsoy. I am an electrician
and inventor of electric instruments of many dideren
descriptions, and have devoted the last sixteen years of m;
life to the study, practical and theoretical, of electricity ant
electro-magnetism.
Alter I made the agreement in writing with Gcorgo llai
rington, dated Oetobor 1, 1870, said Harrington furnishei
mo with money from time to lime to orptip a shop ii
Newark, and to supply the same with tools, materials am
instruments suitable for and adapted to bo used in oxperi
meats for the purpose of devising and improving system
of fast telography, and to defray the expenses of such c>
porimonts. In this general term, fast telography, ar
included all dovices by which the numbor of messages which
until it tins first l>ocn stamped or punched ...it ol
erased for the purpose. Tins preparation of tins
i iirought about by the uso of a complex machine,
ot, except by long practice, bo p repared by an or-
telegraph operator, which requires operators specially
ted.
duplex and quadruplox system of telegraph is that
eli two or four messages can be transmitted over the
rim at the same time. Knoll message is in such case
itted by a separate operator, but no previous pro-,
in of the message is required, and ordinary telegriqib
lie messages are previously stamped or punched, in
y before stated, the duplex or quadruph-x principle
used in connection with the automatie, and thus more
;es can be transmitted in an hour than by either
lely. Both arc, therefore, fast systems, null the d u-
nd quadruplox systems arc applicable to and "useful
amutic telegraphy.
tho 17th day of November, 1871, 1 obtained letters
of the United Stales, Number 1/50,8-13, for a com-
in of the duplex and automatic systems. 1 lie speci¬
es annexed to such patent briefly state the object of
volition, as follows :
in the early part of tho year 1808 I had ini
constructed ami oll'orcd for sale a double trims
moans of which two messages could be trail
opposite directions at tho same limo over a si
This was moro fully developed and perfected i
l'Toni this time T devoted great labor and attun
subjeut.
I was in 1878 engaged at my shop in Nowai-I
upon and constructing telegraphic machines midi
agreements with Harrington. I was visited .by
Eckert, A. B. Chandler and A. S. Brown, who
employed by tho Western Union Telegraph Con
they saw mu at work ill said shop upon, my <
quadruplox machines, and themselves truiismiltu
by means of the same. The machines so operat
embodied tho pri nuiplu and invention afterwards
developed in the applications hereinafter menlioi
William Orton is and lias been for several
J’residunt of said company. During that time I
entrusted by it with the general direction and ii
of its allairs, and as such President lias made in
lliu dillercnt systems of telegraphy and the varh
improvements therein. Lit the course of such im
before July 1, 1874, lie learned of the agreeme
Gunruo Ifarrinutoii and myself, dated April 4
ormcd ami believe, in Maryland, and I did not have the
igrocmont xvitli him before nu\ Without considering said
igi'comont or examining tins sumo, I tbmi made nil agree-
nont with said Prescott, dated August 10, 137-1, in relation
,o my said applications for patents for improvements in
lnplcx telegraphs.
The said agreement, with Prescott was signed by me upon
;lie faith of promises made by him that he would assist me
to develop the said inventions, and introduce the same, and
sell tlie same for a sum or price in some degree commensur¬
ate with their value, and also upon the terms and conditions
in said agreement sut forth. lint thu said Prescott, who was
then and has ever since been electrician of the Western
Union Telegraph Company, lias not, in good faith, carried
out and performed the said promises, terms and conditions,
but wilfully viohiled the said promises, terms und conditions
in the following particulars:
1. lie did not furnish me arty money or assistance of any
kind in and about the developing the said inventions and
Introducing und selling the same, except as hereinafter'
stated.
2. He did, in thu fall of 187-1, assist me to obtain the use
of some or the wires and machinery of the Western Union
Telegraph Company for the purpose of experimenting with
thu said inventions mid hitprovomonls ; but idler thu inn-'
chines embodying the same proved successful lie allowed,
and us I tun informed and believe, undertook to authorize
the Western Union Telegraph Company, without my con¬
sent, to use thu same, and they have, ever since, been used
that I would be induced by tho pressure of want to sell sail
inventions lor a nominal price.
4 The said company ordered of mo (with tho knowledgi
and consent of said Prescott) twenty of the machines cm
bodying tho said improvements. It advanced mo live thou
sand dollars to aid mo in my necessities, and promised t<
settle and close said negotiations with mo promptly. I spoil
nil, or tho greater part of said sum, and used my own crcdi
to tho extent of seven thousand dollars more, in obtaining
material and labor in and about constructing thu said ma
chines. I lind no further capital to expend upon tho saim
or to pay tho workmen engaged in their construction. Yo
the said last mentioned company4, well knowing the fact:
hereinbefore averred, prevented me from obtaining money
by community postponing die said negotiations, in tho ox
pcctntion and belief that I would ho thoroliy compelled t<
ncecdo to terms for the sale of said improvements nuiel
'below their real value.
6. Tho said Prescott 1ms further violated tho said prom
isos, terms and conditions by consenting to und authorizing
tho manufacture by said last mentioned company of otho
machines embodying tho said improvements, and, ns I an
informed and believe, assisted and directed in and about til
said manufacture, and the said company has actually inami
faetured, or caused to be manufactured, many machines urn
bodying the said improvements, and is now using the sain
without my consent, mid without paying mo any compos
sntion therefor.
I knew of tho sale by George Harrington • to Jay Goal
in January and March, 1875, of my inventions relating t
tie, and I then approved of and ratified the s
civet! thirty thousand dollars for my interest t
At about the same time I rescinded the said agreement
ith Prescott, and sent to the Commissioner of Patents a
■tier, dated January 28, 1875, in which I revolted my
.‘quest lor the issue of patents upon said applications to
'rescotl and myself, and requested him to issue them to
rid Harrington and myself.
'i'lie said Western Union Telegraph Company, as I am
iformcd and believe, learned of said letter soon alter it
,-ns filed in the Patent Office, which was about January 2-1,
870. It thereupon, by its said President, attempted to tie-
[Hire the title to said inventions described in said applies-
ion by a letter to me, in whiuh he stntcd that said company
coopted one of my oll'crs for the sale thereof. What ho
inllcd an oiler was not signed by me, and was simply a
nemorandutn of conversation between him and myself as
o tho terms upon which I might sell said inventions. 1
lover olfered them for sale to him or to said company niton
;ho terms therein mentioned. Neither he nor any one on
behalf of said company over notified me that it would buy
said inventions on any terms until nfler the sale to said
Gould was completed, and the assignment thereof and the
[lower of attorney to him were delivered ; said Harrington
never consented to the agreement aforesaid with said Pros-
colt, nor to my selling said inventions, or any of them to
the Western Union Telegraph Company.
I have, since January 28, 1875, olfered to return to said
Prescott and tho Western Union Telegraph Company any
moneys expended by them or cither, in pursuance of said
agreement with said Prosc'otl, or upon tho faith thereof.
THOS. A. EDISON.
Sworn to this 10th day of]
April, 187(1, before me, \
P. H. Hanlox,
Notary Public,
Kings County.
City amt County of New York, ss :
Albert II. Chandler, being duly sworn, deposes and says
I am Secretary of the plninlilf. I have been for abou
eighteen years familiar tvilli telegraphy in all its branches
and have made the subject a sludy. f have road tho allida
vit of Thomas A. Edison, sworn to herein April 10, 1870
and concur with him in all the statements therein eontalnoi
ns to the moaningof the words “fast systems of telegraphy,1
duplex, quadruplex and automatic telegraphs, and as to tin
mode in which tho same are and have been used. I anno:
hereto a copy of an opinion given by Z. If. Wilbur, who i
otic of the hlxnmiucrs in tli
in the Department of Elec
graphic Instruments. In n
in all respects, correct. I n
United States Patent Office
tity and Electrical and Tele
judgment, tho said opinion is
U it Exhibit I.
py of the opinion of J. II
eats, in the matter of the np
on, assignor, etc., nuinberei
, Ilf), 100, for alleged improve
Timelier, Commissioner of Patents, in the matter of the np
plication of Thomas A. Edison, assignor, etc., nuinberei
respectively 04, 00, 0(1, 07, 08, 00, 100, for alleged improve
meals in duplex telegraphs, dated August 10, 1874, filei
September I, 1874. which I marked Exhibit J.
On behalf of the Western Union Telegraph Company, o
which 1 was then a superintendent, I went, in tho latte
part of 1878 or early in 1874, with Gen. Tlios. T. Eelcet
and others to examine tho simp in Newark, Now Jersey
occupied by Thomas A. .Edison, mid to inspect Ins tell
graphic machines and inventions relating to fast telegraphy
Wo found him in said shop, and he showed us said mi
ALBERT B. CHANDLER.
Sworn to tliis lltli day of)
April, 1870, ljoforo me, (
1'. IT. Hanlon,
Notary Public,
Kings Co., N. Y.
EXHIBIT I.
REPORT OE EXAMINER ON DUPLEX AND EAST
TELEGRAPHY.
In tlie innltcr of certain applications of Thomas A. Edi¬
son for 11 duplex ” ami “ quadruples " telegraphs. Appli¬
cations Nos. Do, DO, 07, D8, 00, 100 anil 112.
7b the Honorable Commissioner of Patents.
In compliance with the verbal directions received from
your honor, I have carefully examined the above noted
applications in connection with an assignment and power of
attorney made by Edison to lion. George Harrington, signed
April 4, 1871, and recorded May 0, 1871 (Liber U. 18, 70,
412.)
This assignment first recites that, whereas, -‘I (Edison)
"did stipulate and agree to invent and construct, for the
thirds in interest of “all my said inventions," and then goes
on by inclluding therein “mechanical nr copying printers,"
a class of instruments which might not, legitimately, fall
under the heads enumerated of “Little’" “ otlior systoms of
automatic," or “ fast system of telegraphy,"
IIu enlarges, or rather fixes tlio scope, so to speak, of tliis,
by enumerating therein “all the patents for such inventions
and printers, whether already issued, applied for, or to be
hereafter applied for."
In a succeeding paragraph lie states, that being desirous
of obtaining 'Harrington’s assistance for various objects, that
ho has constituted and appointed, and by those presonts
“ do constitute and appoint George Harrington, of die City
“of Washington, District of Columbia, my true, lawful and
“only attorney irrevocable,!* to do just what lie (Harring¬
ton) may think best in suiting, transferring or conveying all
the rights, titles and interests “ in and to any and all of my
“said inventions and the improvements thereto, whether
“ made or to be made, and to sell, transfer and convoy all
“my rights, by patents or otherwise arising thorufrom
“ already made and obtained, and all such as may hereafter
“ bo made or obtained," » * * * “ hereby divesting
“ myself and investing him, the said Harrington, with all
"the powers necessary in the premises," * * ® * *
" and requesting the Comtnisionor of Entente to reeogniiio
" him as such attorney."
I find then, hero, first, an assignment complete of an tin-
*' Thu question seems to be, then, <U> tho eases noted fall
within the provision of tliis assignment. and power or
attorney? . . .
540 The term “ fast, systems” lias acquired in toloirraphy a
peculiar significance, referring only to increasing the capacity
ora single wire for business, taking the plain or ord.nary
“Horse" as a standard. In the fastest system known, the
“automatic," the capacity for any single operator lor work
is not increased, but by peculiar arrangement* one wire is
enabled to carry die signals designated by the work of a
number of operatives; so in “ multiplex," another “fast
system, and so with “ duplex" or “cpmdruplex." in each,
each operator himself cun work l.is individual instrument,
547 whether sending the message direct or preparing it for trans¬
mission, at the average rate of tlte ordinary “Morse;” tho
“fast" comes in in the arrangements whereby from two to
a dozen or more operators can lie accommodated by one
wire instead of a wire being given to each, as n, ordinary
“ Morse."
For tho past Tew months “ cheap systems " lias been used
somewhat as a synonym therefor.
Hence I am of the opinion that the eases referred to
clearly fall within the provisions of the assignment and
... power of attorney alluded to.
Tito fact that the “ duplex" patent, already issued to
Edison, No. 150,848, November 17, 1874, was issued to
Edison and Harrington, seems corroborative of this.
The assignment to Mr. Prescott, which has been endorsed
upon the files of certain of those eases, (all excepting No.
112V was made August 19. 1874. Recorded August 29.
T am very respectfully,
V our obedient servant,
Z. F. Wild tUll,
Exanw
Hoorn 118, January 29, 1875.
EXHIBIT J.
[In the mutter of the applications of Thomas .1, /si
Assignor, (On,, iVbs. 91, 95, fill,, 97, 98, 99 ami !.0(
Utters Talent far aliened “ I.MtutovnsiK.VTS IN l)u
TixkoU.UUIS,” filed September 1, 1874. — Decided Man
1875.]
T 1 1 AU 1 1 13 1 1, Commissioner.
Prior to the tiling of these applications, the folk
assignment was sent to tho Patent Olliee, and reeordui
gust 29, 1874, in Libor K, 18, page 112, of Trausfi
Patent-'.
ASSIGNMENT— Hf> rSON TO PHKSCOTT, DA
AlKiir.ST turn, 1874.
Articles of agreement made and entered into ibis
(couth day of August, A. I). 1874, by and between Tl
A. Edison, of Newark, in tin' .State of Now Jersey
Clcorgo 11 Prescott, of the City and State of New Yoi
Witnesseth ; liViercus, said Edison has invented e
improvements in duplex telegraphs, lor which lie has ex¬
ecuted, or is about to execute, applications for letters patent
of the United States, and such applications are numbered
94, 95, 0(5, 97, 98, 99 and 100, and are dated August 19,
1874, and said Prescott is entitled to an equal interest in
the same and others hereafter mentioned:
daiir loyal representatives. Am/ whemit , tlio said Kiliaou
has also invented other improvements in duplex telegraphs,
the descriptions of which have been lodged with Mr. George
M. Phelps for the purpose of models being constructed, it is
horcby agreed that such inventions are included in this
prcsont agreement, and that, when the applications for
patents are ma le, the patents to be granted in accordance
herewith, and that the said Edison shall sign the required
papers therefor.
This transfer is made on the following terms and condi¬
tions, which are hereby made part of tlio consideration in the
premises :
any ol'stdd inventions, or of any future improvements thereon
made by cither party, and of all extensions and re-issues of
any such letters patent.
fs'ecoml, — 'Unit whereas , Edison has heretofore expended
§1,125 for models ami patent fees, the bonulil of which ho
contributes to the common interest, ami waives reimburse¬
ment of that sum or of any part of it, Prescott Itoruby agrees
to pay solely, and withoutcontrilmtimi from Edison, all tlio
future expenses and costs of spociliculions, drawings, models,
Patent Office fees mid patent solicitors' and agents' foes,
to duplex telegraphy. It is also worthy of notice, in
connection, that Edison is a very fertile inventor, as
great number of patents obtained by him within the last
years conclusively shows. The presont applications ext
a sories. commenced not. long ago, to the number of
hundred. It must be remembered, too, that there lias l
great activity in inventions r. lating to telegraphy f<
number of years past, and sharp competition has exi
between inventors of various improvement*. It is inet
hie, under these circumstances, that an inventor like Ed
should allow such valuable improvements to lie thro
lour years after completion without applying for putt
In the absence of positive evidence on this point 1 1
follow the presumption, which, in this instance, is so sti
as to amount almost to a certainty, that the inventions
serihed in these applications were not in ease when
agreement was made between Edison and Harrington,
milling, then, that this deed includes these invention
unmistakable terms, no legal title in them passed the]
to Harrington ; the instrument has the force only o;
executory eontrnol. (Gibson iv. Cook, ISuiehf. 144; 0
on Patents, 4th cd„ sec. 188, note 2, p. 20(1.)
'I'lie leijul title to these inventions, then, was outircl
Edison at the time ho executed the assignment to Pros,
and ho alone had the right to convey any interest in
inventions or patents granted therefor. 'Phis right ho u
'eised with all due formality when, in 1874, lie eonvoyoi
entire half interest in the inventions to Prescott. Who
this was done in violation of an outstanding contract is
material to the present discussion. Prescott bccnino
legal assignee of Edison, and, upon the execution of
assignment of 1874, Edison and Prescott became the
• sessors of the Jci/at title to the entire inventions. This
elusion is controlling in ell'eet, for Edison is estopped I
setlctb tho inntturut largo would operate. But au estoppel
arises alone upon a recital of a particular fact. Speaking of
a moitgage deed, “There is,” said Lord Tendcrden, deliver¬
ing the judgment of tho court in Doe d. .Tellroys to. Duck-
noil, 2 li. and Ad. 278, “ n want of that certainly of allegation
which is necessary to make it an estoppel.” Lord ITolt lays
it down in Salhy n. Kiudloy, 1 Show. CO, that '‘general
recital is not au estoppel, though recital of a particular fact is."
(Doe vs. Oliver, 2 ‘Smith's Leading Cases, Hare it- Wallace's
Notes, 7th Am. ed., 050.)
The deed in question does not point out, eillior by recital
or description, any particular invention or patent. It is
vague in its terms and executory in its nature, and, for the
latter reason, as well as for its uncertainly, an estoppel can¬
not bo considered as arising thereupon. (Doe vs. Oliver,
/hi/, 073.) ...
The discussion of this case might rest hero, I believe,
with perfect certainty that, if the necessary formalities have
been observed, the Commissioner must necessarily order
the patents to issue to Kdison and Prescott. But I am still
moro strongly confirmed in this opinion by the liict, ns 1
believe, that l’reseott is the owner or some interest in the
inventions, whatever ollbet may bo given to the Harrington
contract. If a court of equity shall hereafter carve out a ■
Iwo thirds interest in the patents granted, and give it to
ffarringt . the deed of Kdisnn to Prescott will still take
elleet on the lessor interest, if the grantee chooses to enforce
it. (1 Hayden on Vendors, 317 ; llrown ns. dnukson, 8 Whea¬
ton, m- Waters vs. Travis, 0 Johns., dot); Turnbull cl al.
as. Weir Plow Co., 7 Official Gazette, 173.) Whether in this
contingency Prescott can enforce the eoutraet to tho full
extent of the one third interest remaining in Kdison, or
whether the terms and conditions of the grant are such that
t can be enforced only to the extent or one half Kdison’s
IS immnleiinl. Upon the record belbre me, Pres-
11 1 °1 1 I s indefea-ible right to some inter-
April, 1870, lit 101 A. M., why tho interlocutory injunction
ami relief prayed fur in llm complaint should not lie grant¬
ed, and why the plaintiil' .should not have such other relief
as may ho just.
And, in the meantime, and ant'd the hearing and decision
of this motion, it is
Orileml, That the dulendanls, and each of them, and their
attorneys and agents he, ami they hereby are enjoined and
restrained from prosecuting or withdrawing seven applica¬
tions lor letters patent of the United Stales, for improve¬
ments in duplex telegraphs, dated August 11), 187-1, filed in
tlic United Slates I’atent Ollice, September 1, 187-1, and
numbered respectively 0-1, Do, !)(), 07, 98, 91), 100, or any
of them, and from receiving letters patent for tho same and
each of them, or for any of the inventions and improve¬
ments therein described and from selling, disposing of, or
incumbering the said applications and improvements, or any
of them.
G. M'. Sl’KIll,
Judge ts'ii/Kriur Churl.
Exhibit U.
This Imknlure, made this first day of October, one thou¬
sand eight hundred anil seventy, by anil between Thomas A.
Edison, of Newark, in ‘the State of New Jersey, of the first
part, and George Harrington, of tho City of Washington,
District of Columbia, of tho sucond part.
Witnemetk : That for and in consideration of one dollar
paid in hand, one to the other, tho rcccint wlmmnf tc-
grapliy, ami ol all such other machinery instruments, tools,
or articles, or things, the munufaetiiro of which may bo offer¬
ed to or obtained and accepted by them. Tho said parties tc
be interested as owners in all original inventions and im¬
provements, invented, purchased, or obtained by them or
either of thorn, and in all tho interests and profits arising
therefrom, and in tho profits ami losses arising from tho busi¬
ness of imiiiiifucLuring m the proportions as hereinafter set
forth.
tiamil. — That the business of said linn shall be known
and eoiidnuted under the name and stylo of “The American
Telegraph Works."
T/tiril. — Tho place of manufaetiire shall be m tho City of
Newark, State of New Jersey, until such time as it may lie
mutually agreed to soleet some other locality.
Vuurih. — T'lio capital of tho linn shall he nine thousand
($9,000) dollars, of which llm party of the first part shall fur¬
nish the sum of tlireo thousand dollars in tho manner herein¬
after sot forth, and the party of the second part shall furnish
tho sum of six thousand dollars in cash.
Tho capital to bo furnished by tho parly of thu lirst part
shall consist of tho stock, machinery, tools and inventions
owned wholly or in part by him, of which an inventory shall
be Hindu without reservation, but so Much of the stock, ma¬
chinery, tools and fixtures, partly owned by said party of the
fust part, and in part owned by one William Unger, ns are
now located ami in use at the former plaeu of business, at
number fifteen Railroad Avonuo, Newark, Now Jorsoy,
shall bo allowed to remain there for use by tho parties hero¬
in, and tho said William Unger, under tho unoxpired part¬
nership as existing at this date, bet ween Edison, party of the
first purl, and the said William Unger; but said shop, inn-
01, is to 111) transferred to the American Telegraph Works, to
III) established iiikIui- this agipMtiunl, ami tlio transfer of the
title to tlio slock, machinery, tools, fixtures ami inventions,
mvneil wholly or in feirl hy llm patty of the fust |iait to the
[iiirtiesof the Itmlnml seeoml pari jointly, to lie held hv them
in the proportions respectively, according lo the amount of
eapilal furnished as herein stipulated, shall he taken and re¬
ceived as full payment of the proportion of capital to he
supplied hy tlio party of the first part.
b'iflh. — The party of the lirst part shall give his whole time
and atlontion, talents and inventive powers lo the business
and interests of the linn, and shall admit no other (Duties lo
any direct or indirect interest in or lo any inventions or im¬
provements made or to lie made hy him, except as hereinaf¬
ter sot forth ; hut all such shall inure and belong to the par¬
ties of the lirst and second parts as above set forth, in the
proportions as sut forth in section sixth of this indenture ;
provided, however, that thu inventions made exclusively for
the Gold and Slock Company, which under a contract be¬
tween said party of the lirst part ami Mr. Marshall LoH'orls,
are to lie the sole property of the Gold and Stock Company,
are not to hu included in this agreement. Hut the said Kdison,
or party of the lirst part, hinds himself not lo invent under
said contract any mauhinery that will militate against auto¬
matic telegraphy, niir to sell, transfer, or convey to any par¬
ties whatever, without thu consciitof the party of thu sueond
part hereto, any invention or improvements that may ho use¬
ful or desired m aiitomalie telegraphy, and provided fur¬
ther, that, for any original inventions or improvements that
the (tarty of the lirst part may make other than such as may
ho suggested or arise from the current work in the mauufae-
tory ; there' shall ho allowed and paid hy the linn to the
party of the first part a reasonable and proper compensation
therefor, according to its practical value, tdl things consider
cd ; such payment to he in addition to and irrespective o
question shall bo referred to an arbitrator, or, if proforrcc
by either of the parties to throe disinterested parties, ono It
ho chosen hy each and the third hy the two thus chosen, ant
whose decision shall lie Until and binding upon both.
Nath. — That all profits arising from thu business of the
linn, and from alb inventions and improvements and from
tlie manufactory, shell lie divided between tlio parties as fol¬
lows: Ono third thereof to, the parties of tlio lirst part, and
two thirds to the parly of tlio second pari, and all faxes,
rents, insurance and oilier expenses, and all losses or dam¬
ages, if any such shall occur, shall be paid from tlio general
receipts of the linn arising from its business ; if there shall
ho insullioiont receipts, the deficiency shall he supplied by
the parties hereto in tlio ratio of one third and two thirds,
or shall lie taken from the capital of the company.
(kvcntli. — The partners shall lie allowed and (laid from the
gross revenues arising from the business a sum equal to lit-
teen per cent upon the capital per annum to be divided in¬
to monthly payments, and a like pur centum on moneys ad¬
vanced by oither party over and above their proportionate
parts of till) capital ns above sol forth, and all excess of
profits shall remain in tlio treasury of the linn lo lie
appointed to the enlargement of the works and mnnufnclory
and extension of the business ns may from time lo time ho
agreed upon, otherwise, than asset forth in this section, there
shall iio no inonoys or property belonging to tlio linn with¬
drawn, taken or used hy either partner, except upon tlio
written consent of both partners.
Mjhtli. — The (Dirty of tlio first (Dirt shall have tlio control
and direction of tlio manufactory, and shall employ and
discharge all workmen as he shall deem best for tlio interests
of tlie linn, shall pui-oha.se at lowest, cash prices without,
commission, tlie machinery, tools, stock and other necessar¬
ies required in the manufactory, and generally shall bo res¬
ponsible for tlie careful preservation of tlie machinery and
llio depositions of the products of the manufactory, sliall lie
performed, or approved, controlled mid directed lit liis
option by the party of the second part,
iVinlh. — There sliall lie no notes given, nor any liabilities
orented by anymoinlier of tint linn without the previous
assent of liotli the partners.
Before contracts sliall lie entered into for tlio manufacture V
of any given number of articles, it sliall be Ibe duty of the
party of the first part carefully to estimate Ilia whole j
nnioantof moneys that shall bo required to fulfil such eon- I
tmet, if made, and the length of time that, will be required |;
to produce the articles wanted, and such estimate shall be
submitted to the party of the second part, in order to ascer¬
tain it thefinancial condition of the firm is such as to justify
the outlay, and whether, when making the contract, if should
not be provided in such contract for advances to be made,
by the parties for whom tlio work is to be done in propor¬
tion as the work progresses and before completion.
Tenth. — Full accounts shall bo kept of all business done I
by the linn, and all transactions of purchase, manufacture
sales, receipts, and payments shall he clearly and fully
recorded, together with a detailed account of all expenses of (
whatevur character incurred, and the books and accounts 1,
shall at all times he open to the inspection of eithor partner. &
/eleventh. — Kacli partner shall give a true account of all j|
moneys, property matter and things that may come into his ra
hands or to his knowledge, belonging to or concerning, or in |J
any wise affecting said partnership or said business. j|
Twelfth. — It is further stipulated, agreed and understood. H
GEO. II A IiJilNGTON, |8hai,'|.
THOMAS A. EDISON, [Skai.].
of
J. W. Tiikadwki.i,
CllAS. S. HfiUllNSuX.
ml Slulc if A he Yurt;, ss.
t clay of December, JS70, before me, perso».;
Ociorjas Harrington and Thotiini* A. Edison,
rsonally known, and known by nets to lie llio
‘crihud in, tind who executed tins wiiliin insti'ii-
•v severally acknowledged to mo that, they
CllAS. II. K1TCIIED,
A'otary /‘ulitic,
In and for New York City and County.
Thomas A. Edison, of the City of Newark,
.Jersey, for curtain valid and valiinhle onto
mo in hand paid, anil in further consideration
venants and stipulations to ho fulfilled by
'fiton, of Washington, District of Columbia,
ml agree to invent and construct for the said
1 and complete sets of inslrmnunts and mil-
imnld successfully and economically duvelop
tse the I .it tie or other system of automata; or
oi two tnirds to sattl Harrington and ono third to myself,
the wholo to lie under the solo control of said Harrington
to lie disposed of by him for our mutual benefit in the pro¬
portions hereinbefore recited in such manner and to such COC
extent as ho, the said Harrington, should deem advisable, with
power to sell, transfer and convoy the wholo or any part of
the rights and titlos in and to any or tdl of tho said inven¬
tions and improvements, as also of tho patent or other
rights arising therefrom. And tho sattl Harrington having
faithfully fulfilled all of tho covenants and stipulations on-
tored by him.
Now, therefore, bo it known, that in consideration thereof,
and of tho sum of one dollar, to mo in hand paid, I, Thomas
A. Edison, of the City of Newark, Slate of New Jorsoy, do 007
by those presents hereby assign, set over and convoy to him,
tho saiil Harrington, two thirds in interest of all my said in-
volitions, including therein all my inventions of meehanieal
or copying printers, ami of all the patents for all such inven¬
tions and printers, whether already issued, appliotl for or to
bo hereafter applied for, and of all and whatsoever of my
inventions ami improvements made or to lie made, and
of all the patents that may be issued thorefor that arc or
may be applicable to automatic telegraphy meehanieal
printers. 008
And whereas, l am desirous of obtaining tho cooporntion and
assistance of the said George Harrington in disposing of my
said ono third iiitorest, as boforo recited, and for tho purposo
of united and harmonious action in negotiating for its use or
its sale, and transfer bv or to others in coniunction with his
> thirds of tl
li 1
(HO or to ho made, and to soil, ti.m-.fer anil comet all of my
sl‘Wi Uy patent, or olherw iso, arising therefrom, alroailv
ado ami obtained, and all sacli as may hereafter be mad'o
obtained, and to execute in fall any or all llio mioossarv
iporsand dui iimcnts lupnsitc for tlio transfer of title, and
invest in other parlies fall and legal ownership therein,
reby divesting myself of and investing him, the said liar-
Igton, with all the powers neeessary in the premises fully
id completely to earry out the purposes and intentions
iroin set forth, hereby felly eonlirming all that my said at-
noy may or shall do in the premises as fully as if done by
e in person, and requesting the Commissioner of Patents
recognize him as such attorney.
In witness whereof, 1 have hereunto set my baud and
fixed my seal, in the City of Newark, this fourth day of
pril, eighteen hundred and seventy-one.
T. A. 151 > ISON, [Ska t,.j
In presence of )
A. D. CoiiuitN, t
A. 33. Gandek. )
Exhibit 15.
This Indenture, made the 2d day of May, 1870, between
eorgo Harrington, of the City of Washington, District of
dumbin, of the first part,
The American Automatic Telegraph Company, a joint
ock association formed under the laws of the State of New
the said George Harrington two
2. Awl whams, by a curtain deutl bearing i
187X, the said T. A. Kdison assigned to tli
Harrington two third parts of the patents a
therein mentioned, and gave to the said Uqopj
power to dispose of the remaining one third.
8. .lad whereas, the said George Harrington
associated with himself .losiah C. Keilf, Soy
fit Company, William .1. Palmer, Henry C. 1-
atnl others, for the purposes of further (level
inventions of the said 'I'. A. Kdison, and the)
entitled to a share of the fruits amt proceeds i
lions and of tho patents therefore in proportio
tributions of the funds expended for the p
-1. Anil whereas, several patents have been ]
United States for inventions made by the sail
in elcctrie-tolegraphy, including apparatus f
paper and the preparation of paper for ohomi
and machinery for type writing, etc., which s
wero made by tho said T. A. Kdison under an
of the said arrangement with him, and aro it
stud deed of the -Ith of April, 1871 ; ami tli
have been issued to the said Georgo liarring
Kdison jointly. And tho said T. A. Kdison I
cation for other patents for inventions niado 1.
said, which have not yet been granted.
5. And whoreas the title in and to tho sai
inventions has been vested in tho said Gcoi
9. And wltcreus, on or about the Otli day of April, 1875,
the said George Harrington in furtherance and part per.
formauce of tlio said proposed bargain made on the 80th
ilay of Uecombor, 1874, and of a furtlior oral agreement
•between .lay Gould, .Jolm McManus, ,F, 0. Heifl' and him-
self, in the belief and expectation, and under the declarations
of the said .lay Gould, that it wotdd be fulfilled by tlio
said, the Atlantic and Pacific Telegraph Company, did in- 022
dividunlly, and as attorney for the said T. A. Edison,
execute a certain deed, bearing date 9th April, 1875, pur¬
porting to Ire an assignment to the said Jay Gould of the
patents and inventions of the said T. A. Edison therein re¬
ferred to, which stud instrument was by an instrument in
writing, under the hand and seal of the said T. A. Edison,
bearing date 15th April, 1876, approved, mil lied and con¬
tinued by the said T. A. Edison, and the snmo was recorded
in the patent ollico at Washington, May 7th, 1875.
10. Anti whereas, the said George Harrington, on the 10th 028
day of April, 1875, handed the said deed of Otli of April,
1876, to the said Jay Gould, as a trustee or agent for the
Atlantic and Pacific Telegraph Company, with a letter from
tlio said George Harrington, addressed to the said Jay
Gould, signed by tlio said George Harrington, requesting
Inin to withhold the said assignment until tlio Atlantic and
Pacific Telegraph Company should deliver to him, the said
Jay Gould, 31,800 shares of the stock of the said company,
and then to deliver the said assignment to them. And in
and by the said letter the said Jay Gould was directed to
hold the said 31,800 shares of stock to lie delivered to the 024
said George Harrington, T. A. Edison, J. 0. HcilT and
others named therein in the shares and proportions therein
mentioned.
11. Ami whereas, the said George Harrington, on the
10th day of April, 1875, handed to tlio said Jay Gould a
certain deed, bearing date 10th April, 1875, purporting to bo
United Stales to George Little, and also to uei'tnin other
ml mi the said ltlth day of .April, 1875, the said George
rington handed the said last mentioned deed to the said
Gould, as thoagent of the Atlantie and 1’aeilic Telegraph
ipnny, with a letter from the saiil George Harrington to
said ,lav Gotdd, addressed to the said day Gould and
icd by the said George Harrington, instructing the said
Gouid that the consideration to he paid on the delivery
he said deol to the Atlantic and l’ncilie Telegraph Cone
y was 8, ‘dint sharesof the stoid; of the last named com-
r, whieli was to he distributed amongst certain parties
ed In the said letter of instruction in the shares and pro¬
ions therein named.
2. Ami whenas, thesaid, the Atlantic and I’aeilie Tele-
ill Company, hath refused to deliver to the said Jay
tltl the said 31,800 shares of the saiil stock for dislri-
ion as aforesaid, and hath also refused to deliver the said
10 shares as aforesaid. And thesaid proposed sales of the
patents and inventions have hem wholly abandoned by
Atlantie and l’ncilk' ’IVlegmph Company, whereupon the
deed, purporting to tic deed of transfer made hy the said
uge Harrington to the said Jay Gould, and the said
d purporting to he a deed of transfer to the Atlantie
l’ncilie Telegraph Company, are, and each of them
imperative and of no effect,
3. And wltcmis, the said George Harrington, tins sold
Lite said Jay Gould, wh.it would have lu.cn his, Hut
I George Harrington's, share of the said stock of the
antic and I’aeilie Telegraph Company, if the said pur-
su of llie said patent, rights mid inventions Inal lieen
\nd die said George Harrington 1ms received from die
1 Jay Gould die price ami consideration of, and for his.
said Gcnrgo Harrington's said share, and the said Jay
aid is therefor entitled, as assignee of the said George
rriagton, to all his, the said George Harrington's, ituli-
the said patents and inventions, to be realized from the sale
or other disposition of die same.
14. And whereas, , die said T. A. Edison 1ms made certain
inventions for die duplex and quadruples transmission of
messages by electric telegraph upon one wire at die same
time, and die said inventions were embraced in and by the
said deeds of October 1st, 1870, and 4th April, 1871.
15. And whereas, it was understood and agreed by and
but ween the said George- Harrington and Jay Gould, that
the said 81,800 shares of stock* should lie the consideration,
not only for the patents and inventions included in the said
deed of Otli of April, 1875, from tlio said George
Harrington to die said Jay Gotdd, but- also for tho said in¬
ventions of the said T. A. Edison in duplex and quadruplox
telegraphy, saving and excepting only tho right of die said
T. A. Edison to one third of tho fruits and proceeds
thereof.
13. .Iml whereas, on or about tho first day of January,
1875, tho said Georgo Harrington, in the expectation and
belief that the said proposed bargain mentioned in die snid
memorandum, hearing date the 80th December, 187-1, would
be consummated, did execute and' deliver to die said Jay
Gotdd a certain deed, purporting to bo an assignment by the
snid George Harrington to the said Jay Gould, of die said
inventions of die said T. A. Edison in duplex anil quad-
rtiplex telegraphy.
Which said deed bears dale die 1st day of January,
1875, and tin: same also purports to lie a substitution of die
said Jay Gotdd in die place of tho said Georgo Harrington,
ns attorney in fuel, for the said T. A. Edison, under the au¬
thority of die said recited deed, bearing date tho 4th day of
April, 1871.
17. And whereas, by a corlniii deed, bearing dalo 4th day
of January, 1875, die said T. A. Edison gave to the said
Jay Gould llie power to sell and transfer all the interest of
him, the said T. A. Edison, in the said inventions in duplox
and quadruplox telegraphy. ,
18. Ami whereas, by a certain instrument in writing, bear-
ine dale the Ctb day of January, 1875, llie said Jay Gould,
is attorney in foci for the slid T. A. Edison, did sell for the
mm of $30,000, and assign to Samuel M. Hills all the inter-
;st of the said T. A. Ellison in thosnid inventions in duplex
md quadruplex telegraphy.
19. 1 <"l whereas, by a certain instrument in writing, bear¬
ing dato the lltli day of January, 1875, the said Samuel M.
Mills sold and assigned to the Atlantic and l’aeilie Tele¬
graph Company for the sum of $80,000 the said right, which
he laid acmiirod under lhe last mentioned deed to him.
And the said the Atlantic and Pacific Telegraph Company
is entitled in like manner to the individual share, right and
interest of the said T. A. Edison of, in and to such fruits
and proceeds.
Hut- the Atlantic and IV.eilic Telegraph Company having
refused, as aforesaid, lo complete the. said purchase and pay
lhe consideration therefor, neither the said Jay Gould nor
the said company is entitled lo the said inventions in du¬
plex and (puidruplex telegraphy, and the patents which may
ho granted lor the same. And the said deed of lirst (1st)
of January, 1875, from the said George Harrington to the
said Jay Gould is invalid and inoperative, ami the legal title
to the said inventions of the said T. A. Edison, of right is
non vested in the said George Harrington, in trust, to hold
and'dispose of the same for the benefit of the parties bene¬
ficially entitled as aforesaid, of whose rights the said Jay
Gould had due notice when I lie said deed of 1st of January,
dollar in hand pant by the parties hereto of the sccnn
third parts to the said Georgo Harrington, mid for
good and valuable considerations, the receipt and satisfi
whereof the said George Harrington doth liereb
knowledge; he, the said George Harrington, at the rt
of the said parties lioroto of the second and third part
lioroby assign, transfer anil sot ovor unto the said |.
hereto of the third part, trustees as aforesaid, and to
successors, trustees for thu time being, under the Artii
Association of the said company, party hereto of the s
pari, all the right, title and interest vested in and ncc
by and now held by him, the said George Harritigti
and to the inventions of the said T. A, Edison, in d
and qundruplex telegraphy, so far as the same may
or apply to the United States.
And the said George Harrington doth hereby train
the said parties hereto of thu third part, and their s
sots, trustees as aforesaid, all subsisting powers of att
which have been vested in or granted to the said G
Harrington by the said T. A. Edison, in relation to tli
Inst mentioned inventions, sj far ns they may rolatc to
ply to the United States, hereby substituing thu said ti
mid their successors, or such of them as may be until
by the said company to not as trustees, from time tc
in the place and instead of the said George llurringt
the attorney of the said T. A. Edison, with full poi
substitution. To hold the said rights, titles and in
hereby assigned, or inlumled so to be, unto the said ]
hereto of the third part, and their successors trust
aforesaid, in trust for tho benefit of llto said party
second part, their successors and assigns, and to tram
otherwise dispose of tho same from time to tiino, in tli
mice with the Articles of Association of tho said coir
Provided, and it is lioroby declared and agrcocl
nothing heroin continued shall include my right to t
tho said inventions, or to any patents thorofor, beye
outside tho United States. .
And further, that nothing heroin oontamed shall i
min,,.., niVcnt in- imnuir the said tra I t i
ir. it. womens, mco. uahui-nuton,
Witness us to tJ. 0. Ilnirv W. M. S1CYK1C1IT,
mid 11. C. U.vixbtt, .If., JUSI All 0. IlKIKK,
and II. C. DALLKTT, .III.,
II. W. liUSSICLL, W. .1. PALM 1C U,
NDWAlIl) MATTHEWS, Trustees.
as to AV.tr. .1. Pai.muk, A. 1$. WOOD,
C. KOUD STEVENS, TI10S. A. EDISON,
Witness ns to A. 11. Wood's II. W. JIUSSICEL
n pant. 8, lino 1, nftor 11 llitrrtngton," insert “subse-
q.iontly.”
“ “ 3, “ 3, “ words “ purpose o(," insert
" further."
» »i 0, " 7, cruse “ originally," and insert “ mu¬
tually."
“ 11 6, " 7, after “ agreed," insert “ at or beforo
the period or dntes when
the pavties before recited be¬
came interested therein.”
“ 11 8, “ 5, 11 11 Edison," insert " and the ex¬
isting machine and furiti-
<* Paloms and,” insert 11 otht
patents and claims and."
“ With its appurtenances,"
lio it known, that on the second day of May, A. I
tlionsaiid eight hundred and seventy-six (1870), bofor
A. T. A. Torberl, Consul Ocuorid of the United Sta
America at Paris, in Hcpublic ol franco, porsonall
pearcil George Harrington, personally known to me
one of the poi-sous mimed in, who exceuted the with
striununt of writing, and lie acknowledged that ho ext
the same freely and voluntarily, for the uses and pu
therein mentioned.
In witness whereof, 1 have hereunto set my ban
ollicial seal, the day and year above written.
A. T. A. TOH11ICHT,
\ u s- Co,mU (k,ur:
To the D mmi u '!/ L\da,h of the United S,
The petition of 'I’hoinus A. Edison, of Newark,
County of Essex and State of New Jersey, respeetin
resents that yc a 1 tit lei his invented t new
viral. — l lie Western Union Telegraph Company hereby
oleascs tlio sail] Edison from any claim which it may now
ir at any time hereafter have against him for pecuniary
lamngos for the breach of contract by it alleged, as above
luted, over and above the amount of two hundred and
Ifty dollars, and agrees not to proseeuto the said I'ldi-
on for such pecuniary damages for any amount exceeding
wo hundred and fifty dollars, and not to prosecute him for
my amount whatever, unless such prosecution shall be, in
ho opinion of its counsel, necessary or convenient, in order
o determine at law some of the rights of the parties in re-
ipect to the promises.
Second. -'L'lie said Edison hcroby releases the Western
Union Telegraph Company from all claims which ho now
ms or may hereafter have against it for any further pay-
nont on account of the inventions or letters patent above
referred to, or any right or interest therein which the said
jompany may succeed in establishing or maintaining, it
eeing understood that neither party intends in any way to
waivo or compromise his claim or defence in respect to tho
lontrovorsios above recited, except as heroin expressly
stated.
And said Edison also hereby consents that said George 13.
Prescott may assign any interest which ho may how or
hereafter have in said inventions, or letters patent thereon,
to tho Western Union Telegraph Company, and does for
linnsolf hereby assign and set over to the Western Union
telegraph Company all his now romaininir interest if -"v
OF TIIE DISTRICT OF COLUMBIA.
IN EQUITY.
GeoKOE IT.Uilil.VQTON nlltl
Thomas A. Edison
The Western Union TEr-EORArir l Brief on Ulialf of
Companv, [ Complainants.
Geo.eoe B. I ituscorr,
nm! The Hum. R. II. Duei.l,
.Conniiissionor of Patents,
and The Hon. Z. Chandi,eii,
Secretary of the Interior.
THE FACTS.
By a pnrtnersliip deed dated 1st Oct. 1870, T. A.
Sdlsoii and Geo. IlarrinL'Ion forinud a nartnurulim fnr fivn
By (Iced duted 4th April, 1871, recorded Gtli May,
1871, Edison Assigned to Uui'rington two-thirds of any
patents lie miglit obtain for inventions in or applicable to
antonmtie or fast telegraphy. And Edison, by the eiuno
deed, gnvo an irrevocable power of attorney to Harrington
to sell and transfer Edison's remaining one-third. (See
Bill, Exhibit Ho. 1.)
Harrington and Ins associates expended scvornl linn- -
dreds of thousands of dollars in developing the snid invon-
On 9th July, 1874, an agreement in writing was made
iiy Edison and Georgo B. Prescott. It recites that Edison
>nd Prescott are joint inventors of telegraph apparatus for
miking multiple transmission of magnetic signals for use
in telegraphy, which wero described in certain speoifioa-
■ions. It was agreed that both of them should liavo an
iqual undivided interest in those inventions, and in patonts
:o bo obtained for the same; but that neither should dis-
)ose of any part of his interest without the consent of the
itlicr.
_ Shortly afterwards Prescott abandoned his claim to ho
oint inventor with Edison, and another contract was mado
lotween them, dated 10th August, 3874, reciting that Edi-
i°n was the inventor. This instrument purports to bo an
assignment by Edison to Prescott of one-half of the titlo
md interest ot Edison in each of the inventions therein re¬
ferred to, and of the patents on thosainowhon granted, and
t “ authorizes and requests the Commissioner of Patents to
ssuo the said letters patent to Tlios. A. Edison and Georgo
3. 1 rescott, us the assignees of said Edison, for the use and
lelioof of themselves and their legal representatives.”
lho contract contains further provisions in respect to
assignment of the moiety of the titlo to the patents— thosi
conditions being that neither of the parties is to liavo tin
right to dispose of any part of his interest without tiio con
sent of the other party ; that neither of the parties is t(
have the right to manufacture, use, o. sell the invention!
oi the machinery, etc., without the consent of the othci
party ; that no sale of the inventions, and no license oi
right to make or use the same, shall be mado or given, ex-
cupt at a price to which both parties agreo in writing.
See this contract, Exhibit to Bill No. 2.
lho inducement or consideration for tiio making of the
snid contract with Prescott is set forth in tho bill (para¬
graph 4). "
Prescott was the electrician of tho Western Union Tele¬
graph Company, and Edison wanted the uso of the linos of
that company to try his experiments upon. Mr. Orton
wanted Air. Edison to invent improvements in duplex teleg¬
raphy, to bo adapted to magnetic telegraphy, and especially
to tiio Morse system. It was considered that that would
not interfere directly or materially with tho operations of
Harrington and his associates in chemical automatic teleg¬
raphy, which they preferred to tho magnetic.
Edison intended to sell tho patents for his improve¬
ments in duplex and qundruplex telegraphy to tho Western
Union Telegraph Company, for its uso in magnetic tele¬
graphy, and wanted tho aid of Prescott in negotiating tlint
sale ; and Prescott agreed to give that aid. It was arranged
that Prescott should bo entitled to one-half ortho fruits and
proceeds of tho inventions.
Orton gave Edison orders for 20 qundrnplox machines,
and ndvnnccd him §5,000, taking a receipt, dated Doe. 10th
IS 74, which recites that Edison and Prescott. I,,„t
After Hint, Edison nnd Prescott made several oilers of
terms of sale, but were met with the request to name lower
terms. The more anxious Edison was for an arrangement,
the less so became Orton. ,
Edison was treated with coldness and indifterence, nnd
Orton went away to Chicago. During his absence Nar-
rington convinced Edison that ho had no right to sell the
invention to the Western Union Company; nnd Edison
gave Prescott and the Western Union Company notice to
that effect. On 4th January, 1875, Edison gave Jay Gould
a power of attorney to sell ins. Edison’s, interest in the in¬
ventions; nnd Goidd accordingly sold nnd transferred Uie
same by deed, dated 11th January, 1875, to S. M. Mills,
who afterwards mndo a transfer thereof to tho Atlantic and
Pacific Telegraph Company.
Orton, on ids return to Now York, learned that Edison
had gone over to Harrington. Orton then, by a letter
dated January 10th, 1875, 'offered to ncoopt a proposition
which lio said had' boon mndo by Edison and Prescott, to
sell tho inventions to tho Western Union Company, for
825,000 cash “ nnd a royalty of S233 per year fur ouch
‘ circuit created.’ ” These aro tho words of an unsigned
memorandum, nnd it will be observed that it is insniliciont
to constitute a contract. Tho bill points out its deficiencies.
See Bill, paragraphs
When the contract was made by Edison and Prescott,
the former had before him an innccurntc copy of the deed
of 4th April 1871, and Prescott and his legal advisers in¬
sisted that tho inventions of duplex nnd qundrnplex teleg¬
raphy wero not included m tho above recited contracts
between Harrington and Edison.
See, ns to that mistake, tho Bill, paragraphs
aiidyjosf, page
Edison was influenced nnd induced to adopt that opin¬
ion, but on being butter advised by Harrington’s counsel,
promptly receded from his false position, and liotico in
•writing was accordingly given by Edison to Prescott and
the Western Union Telegraph Company, on 23d January,
1S75, that he, Edison, was advised that tho claims of Har¬
rington under tho prior contract wero paramount. And
Edison thereby offered to return to Prescott nnd the AVest-
ern Union Telegraph Company all moneys which had been
expended by them in this matter.
In September, 1874— about 1st of September — Edison
mndo applications, through his patent agent, Mr. L. AY.
Serrel, for patents to he issued to himself tor the inventions
described in tho specifications attached tq.tlio applications.
At tho same time, Mr. Sorrell caused tho contract of
19th August, 1S74, to be recorded— by which instrument
Edison requests tho Commissioner to issue tho patents to
himself and Prescott— without stating in tho patents in
what proportions they wore to hold tho same, nnd of courso
without stating or referring to tho conditions upon which
the title was to ho held.
The applications for the patents' wore not in tho usual
form _ the form given by thu Patent Oflice (Form 3) —
whore tho petition is “ by an inventor for himself nnd an
assignee,” and which form runs thus : “ Prays that letters
patent may bo granted to himself and 0. D., of
ns his assigneo, for tho invention set forth,” &o.
The petition was in the form No. l.used by an inventor
applying for a patent in ids own name. It runs thus :
“Your petitioner, Thomas A. Edison, of Newark, N. J.,
prnys that letters patent may be granted to himself
fertile invention of Improvement in duplex telegraphs,” &e.
Thu so-called assignment was filed with tho applications
or petitions, nnd was left to speak for itself. On rending it,
it will ho scon that tho request to isstio tho patents to
Edison' and Prescott, jointly was improvidently mndo— that
it was a manifest blunder, ns tho titlo shown by the patents
so issued would be widely different from that which Pres¬
cott was to have. For this reason, if it stood alone, Edison
would be justified in revoking that request.
The patents on being issued to Edison would at once
Prescott 1ms not mode any request under the rules of
tho Patent Office (Iiulo 2) for the issue of the patents
jointly to himself and the inventor.
Prescott’s claim, ns now sot up to tho issuo of tho
pntents partly in his own name, rests wholly upon Edison's
request contained in tho contract of 19th August, IS 71.
On January 23d, 1S75, Edison formally withdrew his
said request for tho issuo of tho patents to himsolf and
Prescott jointly.
Soo Edison’s notice to tho Patent Office, Exhibit to
Bill No. 2.
tho same day, January 23d,
1875, was made by Harrington to tho Patent Office, request¬
ing tho patents to ho issued to himscll and Edison.
See Bill Exhibit Eo. 3.
Tho ease wns argued before the Commissioner of Patents.
Ho decided on March 20, 1875, that Prescott was tho legal
assignee of one-lmlf of tho inventions, tho same having
boon made prior to tho date of -the deed of 10th Angus",
1873— that Harrington wns merely an equitable assignee
under tho deed of 4th April, 1871, if that deed embraced
tho inventions in question; those inventions not Imvin^
boon made at that time.
And tho Comtpissionor hold thnt ho had no right to
recognize that merely equitable title, and no powor to en¬
force it, but thnt tho only remedy of Harrington wns in a
court of equity.
See this opinion ns published in tho Patent Office
Gazette .March, 1875, and in the Journal of tho Telegraph
for April 1st, 1870.
it A" o!’iP°-!r "','s tnkon-to 1,10 Secretary of the Interior.
He, on 8th March, 1870, decided thnt he had no right to
revise the Commissioner’s decision. His opinion is pub¬
lished in tho Patent Office Gazette , Eobninry 29, 1870 am
in tho Journal of tho Telegraph for 1st April, 1870. ’
In a letter from the Commissioner to J. C. Roiff, datoc
March 10, 1870, tl o Coi m sioi l I i od Mr. Roil
that he intends to conform to the decision of his prede
cessor in regard to the issuo of the pntents.
After this conimunieation, viz.: on 21st March, 1870
Mr. Edison revolted tho power of attorney ho had given
to Jfr. Sorrell to make applications for the pntents— wave
tho Commissioner of Patents notice of such revocation,
and thnt ho, Edison, absolutely withdraw tho pciidiu <
applications Nos. 94 to 100. See JJIU Exhibits Eos. i
And on 2Sth March, 1870, Edison gave tho Commissioner
further notice to tho like affect, specifying some additional
applications which had boon omitted in tho last mentioned
notice, and also notifying tho Coininissmnur that ho with¬
drew all applications which had boon made in his name or
on his behalf for the issue of pntents to himself and others
jointly.
Seo those notifications, Bill Exhibit No. 0.
The Commissioner of Patents has intimated that ho
will pay no attention to the action of Mr. Edison, but will
proceed with tho inquiry whether Edison is entitled ns tho
inventor to the issue of the patents ; and if so, his former
request to have them issued to himself and Prescott jointly
shall be followed, notwithstanding tho subsequent revoca¬
tion of that request.
Tho Commissioner bus accordingly appointed throe ex¬
aminers to examine the ense.
Seo tho communications from the Commissioner of
Patents on this point.
On 2Sth January, 1875, tho Western Union Telegraph
Co. filed a bill in the Court of Chancery of New Jersey,
against Edison and Prescott, to enforce a specific perform¬
ance of the alleged contract for sale. Edison’s answer wns
filed 20th May, 1875, denying all the equity of the bill.
No further proceedings have been had since the answer
On 27th April, 187S, n patent was issued to Edison ite
nrrington for nn important feature of tlio quadruple*
legrapli. This patent was issued to Edison and Ilnrring-
n jointly, in pursuance of the said deed of 4th April,
;71, and in accordance with an assignment from Edison
Harrington, accompanying the petition, in 1878.
It is argued by the counsel for Prescott, that the invcn-
m described in this patent is substantially the same us
o invention described in tlio specification Ho. 90, referred
in the agreement of 10th August, 1874, botwcon Edison
id Prescott.
We deny that proposition, and also maintain that it is
lmatorial, as Prescott has no titlo to any of the inventions
ferred to in that agreement.
The bill filed in the present' onto is :
1. To rcstrnin tlio ‘Western Union Telegraph Company
om using tlio invention patented 2ith April, 18 m, Such
io being under color of tlio pretended contract of sale by
dison and Prescott to the company, or under any other
aim or pretext, such use being an infringement of the
itent rights held by tlio complainants.
2. To cancel tlio contract of 10th August, 1874, and to
I'ovent Prescott trom further prosecuting his claim in tlio
atont Office.
(«) Because ho has no titlo at all to the inventions, or to
any patents that may bo obtained for them.
(J) Because, in any event, he has no legal right to dc-
thority to issue a patent in the nnino of an assignee
of a part of tho invention against tlio protest of the
inventor.
(e) Bocniisp, in any ovent, Prescott cannot bo considered
to be tho legal nssigneo of a moiety of tho invention.
4. To obtain a decree quieting tho complainants’ titlo
as against tho claim of tho Western Union Telegraph Co.,
that it has good right to uso the inventions under tho
nllogcd contract for tho sale thereof by Edison and Pres¬
cott to that company.
10
POINTS.
I. 'When mi application is mntio by or on bolinlf of two
or more joint owners of nn invention for the issue of a pat¬
ent to them jointly, a withdrawal of the application by ono
of them deprives tho Commissioner of tho power to issue
the patent.
II. The power of the Commissioner to issno a joint
patent to tho inventor and nn nssignoo of a part interest in
tho patent, is not given by tho patent act, but depends
wholly on tho request of tho inventor to havo the issno in
tlmt form, or his assent to such issue.
Consequently when tho invontor revokes snob request,
the Commissioner cannot proceed.
Ho hns no power to onforeo tho contract made by tho
invontor with tho assigneo of a part of the invention and
hns no right to inquire as to tho suflioieney of the reasons
for tho revocation of tho request.
III. The Act of Congress gives tho nssignoo of' tho in¬
vention tho right to demand the issue of the patent in his
own name nlono, but ho must be the assignee of tho whole
title.
And there must be n previous recording of tho assign-,
mont, nnd tlioro is no legal authority to record an assign¬
ment of a pnrtintorest in a future patont.
IV. Tho rulo of tho Patent OlHco {Rah 2), that in onso
of nn assignment of an undivided part interest in nn inven¬
tion, tho patont shall, upon tho request of such assignee, bo
issued jointly to him and tho invontor, is invalid if it be
road to mean that such issue shall bo had without the au¬
thority or assent ot tho inventor.
V. "When tho rulo speaks of tho assignee of nn “ undL
vided part interest,” it does not apply to a case where tho
assignment is sub modo, and the assignee has no such own¬
ership ns would entitle him to convoy his share.
11
To givo him a right to demand the issue of tho pntont
to himself jointly with tho inventor, would be to givo him
a title diilbrcnt from that which ho hns contracted for.
VI. The proposed action of the Commissioner of Patents
in this ease, viz: to order the issno of tho patents to Edison
and Prescott jointly, will bo illognl.
{a) Because Edison has duly revolted his request for tho
issue in that form.
(Z,) Because Edison has absolutely withdrawn ids appli¬
cations for tho patents.
(o) Because Prescott hns no titlo ns against Harrington.
• (d) Beeauso Trosoott, is in no point of viow, nn nssignoo
of “nn undivided part interest” in the inventions.
(e) Tho decision of tho Commissioner of Patents (Mr.
Thnchor) on tho questions of titlo are wholly orro-
VII. Tho Commissioner should bo restrained by in¬
junction from proceeding with tho ease, nnd Prescott
should, in like manner be restrained Irani prosecuting bis
applications in tho Patent Office. And a dcerco should bo
rendered canceling the contract with him, it having been
made by mistake of the facts and tho law.
VIII. Tho negotiation for tho snlo by Edison to tho
■Western Union Telegraph 'Company did not amount to a
contract; moreover, Edison could make no contract aftoet-
ing the titlo to tho inventions.
That company claims a right to uso the patented nnd
unpntented inventions, by virtue of that alleged contract.
A case is made for a decree suppressing that claim, and
also for nn injunction restraining the company from using
tho invention patented 1S75, which patont belongs to tho
complainants nnd is infringed by tho company.
POINT I.
As to the withdrawal of the applications for patents.
The rales of the Patent Oflice do not recognize the right
of an assignee of an undivided part of the invention to
prosecute the application for a patent alone and without
the concurrence of his co-owners. On the contrary, Rale
30 provides thus: “If there has been an assignment of the
whole or of an undivided part of the invention, the as¬
signee, or in the latter caso tlio assignee and the inventor
jointlg, will bo recognized as tho proper party to proseeuto
the application.”
At tho time of the withdrawal by Edison of all his ap¬
plications for patents, there wore pending in tho Patent
Office tho original applications filed by Mr. Scrrell for Mr.
Edison for tho issue of tho patents to Edison himself. Tho
request to issue them to Edison and Prescott jointly, con¬
tained in tho deed of 10th August, 1S74, stood revoked by
Edison’s letter to the Commissioner, dated 23d January,
1875.
But tho same letter contained a request to isstto tho
patents to Harrington and Edison jointly, and that stood
unrevuked.
Edison has recently revolted that request, and has with¬
drawn tho applications altogether, with a view to tiling fresh
ones. Nobody’s rights will be prejudicially nlibeted there¬
by, seeing that when tho patents are granted those rights
will ipso facto become legal rights under tho pntonts, with
all tlio qualifications however annexed to tho same by the
contracts with Edison.
Gaylor v. Wilder, 10 How. 477.
Railroad v. Trimblo, 10 Wall. 307.
If tho inventor assigns the whole of his title to several
pntent, it cannot bo issued. It is tho same if the inventor,
after assigning a part of his title and filing an application
for tlio patent, withdraws his application.
Ho certainly has as good a right to do so ns one of
two joint assignees would have, being, however, liable,
ot course, to an action tor damages it, by so doing, he
violates any contract ho has entered into. And a court of
equity might in a proper case make q decree compelling
him to ronow iiis application.
Tho Commissioner of Patents has no power to compel
the inventor to persist in his application, and Inis no juris¬
diction to proceed alter that application has been with-
Thu legal right of au inventor to withdraw his applica¬
tion for a patent, notwithstanding his having filed in the
Patent Office a request for its issuo to himsolf and another
jointly, was deemed unquestionable until tho Commissioner
of Patents, in the present ease, intimated that lie intended
to disregard tho withdrawals.
When an invoutor has made an absolute assignment ol
all his title to the invention, and that assignment has been
recorded, and the inventor has mado an application for the
patent, and has sworn tu the specification, tho patent may,
under tho express provisions of tho Act of Congress, bt
granted to tho assignee, tor he has, under those provisions
a full vested titlo to apply for the issue of tho patent tc
himself, in his own name alone (Pntent Act, sec. 4305)
And tho inventor cannot defeat that right by demanding
the issuo of tho patent to himself (Opinions of Attorney!
Gonorui, vol. 9, p. 403).
If such assignee demands the pntent, it must be issued
to him. but if he makes no such demand, tho Conimis
sioner, not being bound to take notice of tho recorded ns
iB i t may issuo tho patent to the inventor.
It miirlit with reason bo contended that tho mventoi
ing the statutory right to demand the issue of the patent
in his own name, and tho inventor having stripped himself
of all right and title to tho invention. It no longer con¬
cerns him whether the specification is properly drawn or
not, nor whether the application is granted or refused.
But the ease is very dili'eront where the inventor has
assigned but a part of his title. The words of the Act are
(see. 4895) : “Patents may bo grnntod and issued, or re¬
issued, to tho assignee of tho inventor.” One who is only
assignee of a part of the inventor’s title, is not "the as¬
signee,” within the meaning of tho Act. Ono who is only
a partner with tho inventor under articles of copartner¬
ship, is not “ the assignee” to whom the patent may bo
issued in his own name.
Evon if tho assignoo of “ an undivided port of tho in¬
vention ” could persist in demanding the issue of the patent
purtly in his own name, after thu withdrawal of the ap¬
plication by the inventor and part owner of the inven¬
tion, such demand could not bo made by a party claiming
under an assignment of a part or slmro of the invention,
whore tho so-called assign men t, by its express terms, de¬
prives him of the ordinary and incidental rights of the real
owner of an undivided part of tho invention.
To comply with tho demand of such an assignoo would
bo to vest in him a different title from that which has been
assigned to him, and would enable him to porpotrato a
fraud, for, 11s joint patentee, ho could grant licenses (see
this point fully discussed, Point 5).
POINTS II Aim III.
a1« to the issue of a patent jointly to the inventor and his
assignee of apart interest.
The right of an assignoo to demand a patent in his own
name was first given by the Act of 1S37, but before tho
passage of that Act, the assignee of an invention beforo
patent granted, took the legal title to tho extent of tho as¬
signment, whether in tho whole or in part (Gnylor v.
Wilder, 10 IIow. 477).
Opinions of Attorneys General Mason and Mach
Tho opinions of Attorney General Mason and Attorney
General Black wore given upon the Act of 1837, which au¬
thorized tho issue of a patent to “ assignees.”
Tho opinion of Attornoy General Mason, July 7th,
1840 (Opinions of Attorneys Gonorul, vol. 4, p. 300):
“ Patents for inventions cannot issue to inventors and
assignees of a partial interest jointly, but may issuo to
assignees of tho whole interest. No provision has been
made for tho issue of a patent for a part of an invention
to tho inventor and for tho other part to his assignee.”
“ Tho Act of 1830, see. 11, made patents assignable
in law, either as to tho whole interest or any undivided
part thereof, and required thu assignment to bo recorded.
This power of assignment, however, applied only to the
patent, and not the right to sue out thu patent.”
“ Tho practice tinder this Act (the Act of 1837) lias been
to confine it to eases within its terms— to cases of assign¬
ment of the whole interest. It appears to mo very clear
that tho section was framed in view of such eases only.”
lie further observed that tho Act of 1S3U, boo. 11, em¬
braces eases of partial assignments, but that thu 0th section
of tho Act of 1837 is confined to eases of assignment of tho
whole right, and he thinks that a patent issued otherwise
might be hold contrary to law. “ Tho Act of 1S37 does
not impair tho equitable rights which an assignee, before
issuo of patent, had, and his interests will bo protected by
the Courts.”
I
Opinion of Attorney Genernl Black, November 28th
1859 ; Opinions of Attorneys General, vol. 9, ]). 403, fur¬
nished to the Secretary of State.
Tho inventor Ager applied for the patent to he issued
to himself. Woolf and Jordan, assignees of Ager, claimed
tho issue to them.
Thu opinion is : “ Where the inventor of a now machine,
beforo a patent issues, makes a full and eomplcto assign¬
ment of all his right to another person, tho assignee may
have tho patent issued in his own name.”
“ But where tho transfer or assignment of tho inventor’s
right !b only partial, although tho part excepted bo very
small, I do not think that the nssigneo has any claim to
the patent. lie must allow it to go out in tho name of
tho inventor, and bo hold by him in trust for tho usoof the
nssigneo, to tho extent of tho equities which ho has by
virtuo of Iub contract.”
It will bo obsorvod that] tho not makes it a condition
‘precedent to tho issue of a patent to an nssigneo that tho
assignment shall bo recorded. And tho only assignment
which it authorizes to bo recorded is n« iisaiinmiont
embracing tho whole interest.
Tho Act impliedly authorizes tho recording of an assign-
mont of tho wliolo of tho invention bolbro patent granted.
But tho Aet docs not nuthorizo tho recording of an assign¬
ment of a part interest in the patent, until alter tho patont
lias been issued, and then thurccord of tho assignment is by
virtue of tho Act of 1870, sec. 30, and Act of 1875, sec.
4898. (Curtis on Patents, see. 183, note 2.)
There is no stntuto which contemplates or requires tho
recording of any conveyance excepting assignments of
existing patents nftor patents iinvo been obtained, or assign¬
ment of inventions made and perfected, when it is intended
to have tho patent issue to the nssigneo. (Curtis on Patents,
sec. 183, noto 2.)
POINT IV.
The rules and practice of the Patent Office.
The practice of the Patent Office, according to the
rules of prnctico (Rule 2), is to issue patonts in tho joint
names of tho inventor and tho nssigneo of “an undivided
part interest,” when such assignee requests such issue.
Tho pntonts so issued may bo legal whore tho inventor
assonts to it. No prnctico lias been established to make
such issue, when the inventor formally objects to it.
Query : has tho Patont Offieo over issued a patent to
nil nssigneo of a part interest, after tho inventor’s with¬
drawal of his application for a patont?
If road literally, Rule 2 is in direct opposition to tho
opinions of tho attorneys gcnornl, quoted above. Tho rule
takes no notice of tho fanciful distinction sometimes ad¬
verted to botwcon an assignment by tho inventor of part
of ids titlo to himself, and a reservation of such part, when
making an assignment of tho roinniuder to another person.
Nor does the form of assignment published by tho Patent
Office in the forms appended to ils rules, recognize such
distinction.
See Form of Assignment iVo. 38, “ of an undivided
fractional interest in an invention before the issue of letturs
patent.”
It is as follows: “In consideration, &c., I do hereby
soli and assign to said 0. 1), an undivided half of nil my
right, titlo and interest in and to a certain invention ” (re¬
ferring to tho specification), “and I do hereby nuthorizo
mid request the Commissioner ot Patonts to issuo tho said
letters patent jointly to myself and tho said 0. D., our heirs
and assigns."
Tho rules of the Patent Office nrp binding in certain
cases. See cases collected in law’s Digest “ Rules of Pat¬
ent Office.” But it is not competent for the office to make
■is
tiny rule determining what uro tlio legal rights of an as
signce of a part of the title of an inventor.
The rules of the Patent Office in regard to tho right of
such assignee to tho benefit of a patent, naming him ns
one of the patentees, are not, if properly construed and
reasonably applied in practice, open to any objections.
They do not anticipate or provide for tho enso where tho
inventor refuses to prosocuto tho ease In conjunction with
other parties whom he has invested with n pnrt Blmro of his
invention. Although tho statuto does not expressly author¬
ize tho issue of a patent in any caso to tho in von tor and
an assignoo of a patent intorost jointly, it is not probable
that tho courts will hold such issue to bo invalid, when it
is at tho inventor’s request or by his assent. Snell issue is
according to tho established practice of tho office, and it
docs not seem to bo open to any serious objection, for there
is no one to complain of it.
If tho Patent Offico had assumed to establish the prac¬
tice of issuing patents to invontors and assignees of a par¬
tial interest jointly, without tho authority and against tho
will of tho inventor, it would have boon an open violation
of tho Act of Congress which directs tho patent to bo issued
to the inventor, excopt in tho ease when ho has assigned
the invention (moaning tho whole of it). In that ease,
when such nssigneo has recorded his assignment, ho may
demand tho pntont, provided tho inventor has mado due
application for it.
Even if tho Pntont Offico had established tho practico
to issue patents to nn nssigneo of “ an undivided pnrt in¬
terest,” without tho assent, find in defiance of tho opposi¬
tion of tho inventor, such practico certainly would not in
oludo tho enso-wlioro the assignee holds his interest under
an instrument of transfer upon conditions which prevent
him from assuming the ownership and disposition of nn un¬
divided part of tho titlo to tho patent when issued.
The form of a
{Form No. 3S), of
ssignment given by tho Pntont Offico
a., undivided fractional interest in an
invention before the issue of letters patent, would bo inap¬
plicable in such a case, for it assumes tho assignoo to bo the
nbsolute owner of the fractional Interest, with power to
sell, assign and transfer the samo, and accordingly requests
tho issue of tho patent in these words, viz. ; “jointly to
self and tho said C. D., our heirs and assigns."
POINT T.
Assignments sub modo.
If there ho an assignment of 0110-third of an invention,
• on tho condition that neither party Bhould alionato without
tho consent of thu other, and tho patent should bo issued
to tho assignee and inventor jointly (tho usual form), tho
legal rights of tho patentees under tho patent would not
correspond with their actual rights under tho contrnot be¬
tween them. Under tho pntont, tlioy would hold ill equal
moieties, and either of the patentees could, without tho
assent of tho other, give full titlo to anybody to uso tho in¬
vention (Clam v. Brewer, 2 Curtis, 521).
Tho act authorizing the issue of a patent to nn assignoo
of an invention does not apply to a oaso when tho assign¬
ment is not nbsolute, but is sub modo only. T'horo iB an
established distinction botween an absoluto assignment or
grant of a patent right and a grant in which tho patentee
retains tho right to uso the invention himself. In the lat¬
ter case, tho assignoo having only a sub modo assignment,
is not, in legal contemplation, an nssigneo of tho patent,
and, therefore, cannot bring an' action or suit against in¬
fringers (see Brooks v. Byain, 2 Story, 1)43 ; Washburn v.
Gould, 3 Story, 102 ; Troy Factory v. Corning, 14 How.
210 ; Curtis on Patents, sec. 195).
In tho presont case, the assignment of a moiety of tho
power to dispose ot the thing assigned without Edison s
authority. Such a modified assignment or partial ami
qualified disposal of a share ot an invention, looks ono of
the essential qualities of ownership, viz., the./us dispanentli,
and cannot nuthorizo tlio issuo of a patent on the fiieo of
wliieii Prescott would have tlio legal title jointly with
Edison, absolutely without any qualification whatever, and
by virtuo of which lie (Prescott) could grant valid licenses.
It may bo said, however, that Edison would not bo
prejudiced by tlio fact that tlio patent, on its face, makes
Prescott absolute owner of a moiety of tlio patont, beenuso
tlio assignment of 10th August, 1871, to Prescott, which is
recorded, shows tlio contrary. That restriction depends
upon a mere contract. And it raises tlio question whether
tlio record of that instrument is notice as to which it is to
bo observed that tlio recording of an absolute assignment
of the entire title to an invention is recognized and im¬
pliedly authorised by tlio provision of tlio patent law
which requires it to be recorded before tlio patent cun bo
issued to tlio assignee. Tlio Act (sec. !>3) does not in any
way recognize an assignment of a siinro of an invention,
nor does it recognize an assignment of tlio whole of tlio in¬
vention subject to restrictions and qualifications. Such an
assignment does not entitle the nssigneo to demand tlio
patent.
Any purchaser from Prescott, if tlio patent should bo
issued to him and Edison jointly, might roly on the patent,
and would ho under no obligation to search the records of
tlio Patent Oflice for contracts nllectiug Prescott’s title, as
Bliown by tlio patent, and limiting the milliner in which tlio
ownership of tlio expected patent should be exorcised.
Tlio recording ol an instrument not authorized by law
(Util cd.) 171.) A mere license under a patent need no
be recorded (2 Story, 511 ; see, also, Curtis on Patents
sec. 183, noto 2).
There is no statute which contemplates or requires tin
recording of any conveyance oxceptmg assignments oi o.\
isting patents after pntonts have been obtained, or full urn
complete assignments ot inventions, when it is intondei
to have the patent issuo to tlio assignee. (Curtis on Pntonts
see. 1S3, note 2).
The issuo of the patents to Edison and Prescott jointly
would give Prescott tlio legal titlo to a moiety of tlio paten
without any qualification, lint if tlio patent bo issued t
Edison alono, the title of Prescott will thou rest upon th
assignment to him of a moietv mado before tlio issue c
t lie patents, on certain terms and conditions, and lie will no
bo able to make title except under that instrument.
As to the decision of the Commissioner of Patents on t)
question of priority of the two assignments.
Remarks on the Commissioner's decision.
Tlio Commissioner of Pntonts holds that tlio nssig
moat from Edison to Prescott, dated 10th August., 187
vested a legal titlo in Prescott ns nssigneo of one-half of tl
invention in question, which was than ready to bo pn
onted; and that the assignment dated 1th April, IS,
from Edison to Harrington, did not opornto ns a leg
Ten tor. The reason given for this decision is tlmt thein-
vontion was not nnulo nt tho date of the assignment to .1 Car¬
rington, 4th April, 1871.
Tho Commissioner holds that tho inventions were made
at the date of the assignment to Prescott, 10th August,
1874. Unit instrument rolers to sovon applications lor
patents for the invention or inventions ns having been pre-
Tho Commissioner lurthor holds that he lias uo right to
inquire into and deeido the question whether Prescott is
bound in equity by nny previous contracts between Edison
and Harrington affecting tlicso inventions.
Tho Commissioner gave no opinion on tile question
(which lie refers to) whether the assignment of 4th April,
1871, did, by its terms, enibruco tile inventions of the de¬
vices in question for quadruples tulegrapiiy. It was con¬
tended, on behalf of Prescott, that the instrument relates
only to automatic or fast telegraphy, and certain printing
machinery, and that ilio quadruples system- is not a fast
system of telegraphy, within tho meaning of the phrase¬
ology of that instrument.
The ease was argued upon an imperfect copy of tho
deed, ns recorded. The true reading of the original is that
it embraces all kinds of telegraphic apparatus, means, de¬
vices, nnd contrivances which can be applied in autoinatic
or fast telegraphy, and it is clear that the duplex and quad¬
ruples cun bo so applied. That point was not met by Pres',
eott’s counsel, ns they erroneously supposed tho words of
the deed to bo, “and of all nnd whatsoever of my inven¬
tions nnd iinprovonionts, made or to bo made, and of all
tho patents that may bo issued therolbr, that are or may bo
applicable to automatic telegraph inoehnuieal printers t”
whereas tho words in tl o oiin I o tl c o that uro or
may bo applicable to automalio telegraphy or mechanical
printers.”
On March 17th, 1873, Edison nnnliod for a natent rn.
duplex telegraphs, to bo issued to lumselt and ilnrnngl
in nceordnnco'with tho last mentioned deed. Tho pal
was issued November 17th, 1S74. It states that “
object of this invention is to transmit two messages on
same wire nt tho same time by telegraphs employing ]
forated transmitting paper and chemical receiving pnpei
This shows the applicability of the invention of duj
telegraphy to chemical automatic telegraphy.
Many other patents for Edison’s inventions in a
mntic telegraphy, &c., were issued to Harrington nnd 1
son jointly, in pursuance of tho said articles of copnrt
ship and deed of assignment of 4th April, 1871.
The Commissioner is in error in his assumption I
Harrington hold at tho most a right to silo in a cour
equity to compel a specilio performance of his cont:
witli Edison, if that contract should bo hold to include
duplex anil qundriiplcx. And he erred further in hiso
ion that Harrington had no standing oven in equity,
eausu Ito would linvo to prove that tho invention was
feuted nt tile date of tho instrument under which he cla:
On the contrary, it is well suttlud that a contract to
poso of a I'nt lire invention is binding, nnd will ho cnfoi
in a court of equity against the inventor, When tho eont
is not unconscionable. And such a contract will also
enforced against a party having notieo of such contract,
fore acquiring an adverse title by assignment from
inventor.
The Commissioner errs also in saying that Prose
whatever effect may be givon to tho contract with 1
rington, must, in any event, tnko what ho [tho Com
sioncr] assumes to be Edison’s one-third of the title to
patents.
The answer to this is, that Edison under tho cont
witli Harrington, 4th April, 1871, is to have one-thir
the net proceeds of tho patents — the right to dispos
Edison’s one-third beinit irivon to Harrington, “ tho w
Tho Commissioner laid great stress upon this point us
justifying him in grunting the iippliontion of Prescott to
Imvo tlie patents issued to him and Kdison jointly.
Tho remarks of tho Commissioner on the subject of
estoppel are not pertinent to tho enso. Tho doctrine of
estoppel , whether by deed or in pais, lias no application
horc. Tho deed of 4th April, 1871, clearly embraced the
qundruplox invention, and must prevail against tho subse¬
quent assignment by Edison to Prescott, oven if Edison
should bo estopped, as against Prescott, from denying tho
subsequent deed to him. It is, therefore, unnecessary to
comment upon tho authorities cited by the Commissioner
on this point.
The only enso eited by tho Commissioner for tho prop¬
osition that tho deed of -Ith April, 1S71, was not effectual
to pass tho titlo, because the invention lind not then been
made, and therefore it could operate only as an executory
contract, is Gibson ,v. Cook, 2 Blotch. 144, and that enso
is opposed to more recent decisions.
The following review of tho authorities .will show that
tlie Commissioner erred in attaching a superior importance
to the assignment to Preseott. That was like tho prior
assignment to Harrington, a transfer merely of tlie inchoate
right to tho patents that might nossiblv be obtained lbr
estatu in the land, oven after tho death ol her Imsbtiml; i
ill law until her dower lias boon assigned.
In Herbert v. Adams, 4 Mason, 15, it was hold by Ji
Story, that an assignment of an invention could ho n
before the invention is patented ; that it is a good trai
of the right of tho patenteo immediately upon his ob
iug thu patent.
Gay v. Cornell, 1 Blatcli. 509, holds that the assign
an invention (not yet patented) may lilo a bill in ids
name, under sect. 10 of tho Act of 1888, against a rivi
ventor, an adverse patentee, for tlie purpose of mum
tlie patent issued to him, ami to have a patent grand
such assignee.
In Gibson v. Cooke, 2 Blatcli. 149, it was held by J
Nelson that an interest in a grant of a future term
patent not yet in esse (an extension of a patent) is no
subject ol assignment at ouiiunoo Into, or within tlie i
of Beet. 11 of the act of July 4, 1889; and the rigl
such an interest when stipulated for rusts only in eon I
As between tlie right of a person holding a contrite
such an interest, and tho right of a bin Hit i purchase
a valuable consideration, mid without notice ol tho
interest in tlie future term after its grant, tlie lattor
prevail. (See remarks on this enso below.)
In Itntbbun v. Orr,-5 McLean, 132, Jiulgo Me
In Guylor v. Wililur, 10 Mmv. -177, in the Supremo
lourt of the U. S., The court, pen Taney, C. J., held that
m nissi<riiiiieiit of an invention vests in the ussignou the
cgal title to the patent when it 1ms been issuoil, and tlmt no
urther or additional assignment is necessary to perfect the
itle of the assignee.
A contract in relation to a future invention will ho en¬
forced in a court of equity wlion tho bargain is a fair ono
[Nesmith v. Calvert, 1 Woodbt <& M. 41 ; Curtis on Pat¬
ents, see. 189, note).
Equity will support assignments of contingent interests
mid expectations, and of tilings which have no present
ictnnl existence, provided the agreements are fairly entered
into (Story Eq. Jur. sees, 1039, 1037, a; 2 Story E, 1180 j
1 Mare, 449 ; Field v. Mayor of N. V. 0 N. Y. 179 ;
Moore v. Lit tel, 41 N. Y. (10; see also Stoner v. Eycles-
liimer, 3 Keyes, 020, nlH’gdO Barb. 84 ; Hinkle v. Wnnzer,
17 How. 308).
In Field v. Mnyor of N. Y. (0 N. Y. 179), it was held
by the Court of Appeals, that “ an assignment for a valu¬
able consideration of demands having at the lima no actual
existence, hut which rest in expectancy merely, is valid in
equity as an agreement, and takes effect ns an assignment
when tho demands intended to be assigned are subsequently
brought into existence.”
In tho recent decision of tile Supreme Court of tho
United States, in Eailroad Co. v. Trimble (10 Wall. 307),
Judge Ingorsoll’s decision in Day v. Candoe (3 Fisher,
9), is also overruled. ' It was there held that “ a patentee
cannot convey an extended patent buforu tho extension. He
tnuv, however, agree, upon a valuable consideration, to con¬
vey suuli right wlion it shall lie vested in him.
In Euggles v. Eddy (5 Fisher, 381 ; 10 Blatcli. 32), de¬
cided by Judge Woodruff in June, 1872, S. assigned to R. a
patent ami any extension of tho same which might be there¬
after granted. The assignment was recorded. “Subse¬
quently, the patent was extended toS., and ho afterwards
assigned to E. all ids interest in tho extension. E. wont
on to mo tlio invention, and was sued by E. in equity tor
infringement. Held, that the right to tho extended term
passed to It., tho,/iVs< assignee. Tho Court say:
“Thu title of E., if regarded as an equitable title, is
sntli, lent to enablo him to sue E. in equity, E. having taken
title after the assignment to E. was recorded.”
“ But semblc, that R. took tho legal title.”
“ The ease abovo llrst cited (Eailroad Ou. v. Trimble
10 Wall. 307) tends to show that, in fact, tho eomplninan
lms tho legal title.”
Goar v. Grosvonor, 0 Fislior, 814, March, 1873, 3 Of
Gar. Pat. 3S0, in equity, Shoploy, J udge, hold that, “
conveyance mado before a grant of extension, becomes oi
erntive upon tho right ns soon as tho extension has bee
granted, and by force of such conveyance the legal titl
under the extended, as well as the original term, passes *
Otli July, 1S-14,
een <41 anted to
WUl Of 1)U J'l'ilUtOd
tentej inventions
tulud terms — was)
nit'll tel'lll, of
improvement, a
Itli August, 1 S-J (J.
issi.i'iimont of iiu
1 eileet after tho
J ussionmeut to
to Prescott, tlio
IN THE MATTER
oner of Patents,
inventor, slipul-
liuve the owiier-
whiolt lie mi<;ht
held hv them,
t under that eon-
h.v A. issue, I i„
iwunled the issue
THE APPEAL OF EDISON k HARRINGTON from
Till! DECISION OF Tilt: COMMISSIONER OF PATENTS
OF Maucu 20, 1875, TO the Secretary of tiie
Interior.
Reply of Counsel for Mr. George B. Pres¬
cott to tlie respective Briefs of B. F,
Butler, Esq... Counsel for Edison, and
John H. B. Latrohe and Leonard My¬
ers, Esqs., Counsel for Mr. Harrington.
NEW YORK:
presumption of feet Hint those inventions were not
imulo until several years later, to which presumption
ho not unnaturally alluded in some obiter dicta, [See
noto on pp. 7, 8.1 '
Ho said in his opinion “ thoro is no evidence that
tho inventions described in these, applications" (tho
italics arc ours) “ wore in existence at tho time this in¬
strument was executed. It is not even claimed by Uar-
rim/hoi that they were. He simply says thoro is no evi¬
dence that they wore not then in existunoo."
It is to bo observed that it is not tho presold coun¬
sel for Harrington, (who appeared thoro ns counsol for
Edison,) but the present counsel for Edison, who was
not at the heiirimj at all, who' assorts a rofusul by the
Commissioner to receive evidence. As was oncq said
bj distinguish®! lvocuto i Eostoi ,vho, though
stone-deaf for many years, continued to participate in
the trial of causes: “No one can know what an ad¬
vantage it is not to huvo hoard tho testimony on the
othor side." ,
te would seem that counsel for Edison finds some de¬
gree of tho same advantage, in not readi.jg-or per¬
haps in assuming that tho Secretary will nofrond— tho
opinion which 1m is asked to overrule. Certain marked
ccmilricHm iu stating matters of fact, which show
themselves in the bulkier of the two briefs to which
this is a reply, wo attribute to tho client Edison, smeo
they involve exercise of inventive powers which Ins
counsel could scarcely claim ; but the particular tor-
Lt\oi dim si o mb l i i tl o manner of misquoting
tho opinion of the Commissioner in ovdor to sustain a
i 1 ti, i„. .lid not admit proof (wliioli was uovor
elmrgo that lie ilul not uuum pn™, \
olVorcd), is clearly of an other origin.
Ho bogins his brief by saying : .
•' 't'lie questions herein submitted nrise upon the fol-
Thii’il.— Memorandum of agreement between Thomas
Ellison nml George 11. Prescott, lining joint invon-
rs of certain improvements in telegraphic apparatus,
itcil July Otli, 1871.”
Oa pago third liu says : “ The Honorable Seurotary
of tlic Interior, in deciding tho preliminary question,
ifcc., determined that lie would take no evidence,
oral or written, outside of the records of the ollico,
/J'l vs/m/ null/ tlpnlljWhuUlit! Cniuiuissinlltu' Itttil Ihfm't: him
i) ii Hit! mw.fc of lltu tiffin) til the lime tjf' Itis ilmisimt. "
“ In tlio exhibits above set forth we have endeavored ”
jabor of Hercules) “ to produce nothing which
is not upon the records of the Patent Ollico (with a
single exception), and shall draw from them, ifcc.”
On page 99 he says : “ It will bo observed that the
end of tho !)th .Inly was not recorded tinlil ti/iff-
mnls.” The maifnor in which, while professing to
late the record as it existed before the Commissioner,
ottusel interpolates an instrument which was not bo¬
ne the Commissioner, and which was not on tho
eeords of tho Patent Otlioc whoa that argument was
nbmittud, and is believed not to bo there now : witli-
ut any mark to distinguish it whore it stands from the
tiler authentic papers by which it is Hanked, eou-
titntos an instance, almost unique, of a certain kind of
iractice, happily lint little in vogue in tho higher walks
if the profession, the name for which is traditional,
mil need not lie suggested.
We were charitably disposed to find Unit this" sur-
cptitious exhibit ivas the “ oxeoptiou ” referred to at
this instrument has been recorneii, mine.
that an exception adequate to meet and satisfy the
iagtb HI e si sf 1 11 *M
article annexed as an appendix, which could not he
record, compels us to abandon such judgment, and
shows clearly a mendacious purpose, q Hi L 1
,1 l I to counsel, who must linvo boon supposed
capable to overlook it, and to tho public oHicer upon
"'wo 'leave1 it to the distinguished and experienced
lawyer at the head of the Department of tho Interim ,
to judge of a case to wl « ts such practices
Ul Counsel for Harrington after putting (p. 8) a hypo¬
thetical case of fraud, adds: “The case horn , by
way of illustration is to some extent tlm imho *
. , ... f lt, flt4 fi,n m-incinlo is involved ; nml
* 1 r Edison 'IT l'b 'ln 1111,1 olsowhoro) •*'””
K fiuh with t Hi o t'1 s'lo' ‘ 1 1 f f
, Xatln assnnax.obetheiqu.tiof tin .elation >e-
■ t 1 ^ 11 “ 1 . ., 1 t° I
facts in tills connection, pitcisUj tile 11
r Ji,. -«>. a
1ST I Presc'.u and Edisoi.-lhe latter being an myon-
. . . i
*a, j » ;,m «
sr. \ < , ,/
o uocodod to,) those clause!
which nro now objected to
i follows : “ Ami I’m
oimsol, ut page
o (Iml tin
s «/)
Ellison,
vithont liis consent, by llio
already considered, .to.,”
it p. ‘25 of his stilt omoi it ,
could Imvo no tiso of tin
provisions which wo I
but which Mr. Hai-ringt-
accounts for otherwise.
Thoiigrconiontof July nth being made, the partios ini-
modintoly called upon Mr.Edison’schosen piitoutiigont,
Mr. Sorrell, to Imvo tho ruipiisitu procoodings tiikon in
tho Patent Ollico. In the earoful investigation whic|i
then oiisnod Mr. Sorrell was led to doubt whether, in
tho division of labors which tho snpposod joint inven¬
tors had made, tho inventions could bo considered
jgint, within tho moaning of tho law. After intorrogut-
ing thorn as to tho dotails of thoir work, ho bocamo
satisfioil Unit ilio spocilic tilings covered by tho agree-
mont of August 10, 187 i, could not bo considered
ns joint inventions, and ho so advised thoni. As lay¬
men they took his advice, it being undoubtedly true
that m tho sovoral months they I. 1 1 ll i 111
gothor tho special work of Edison had been to con-
coive now combinations, and that of Present to test,
modify and adapt them, as well as to render the same
service to some older conceptions of Edison which he
luu not yet been able to m ,U «o,k snucssfullv
.Accordingly tho agroomont of the tltli July was almii
doned, and until it made its a,, pear, nice in Edison's brief,
was forgotten. Thu agreement of tho tilth of August was
substituted in its place. The same provisions ipstrain-
ug separate licenses, Ac., wore retained, and the paper
,“w 11 . .
In the brief submitted to the Commissioner (and
I for Prescott avoided as muel. as nossi'bh/tn
leal ith otlei tl u the , ostious of law : but
tho law ollieors having this nnittor in clinrgo, to troat
tho now pretenses of Edison as anything but the im¬
pudent " rogueries which tlioy are. His conduct
towards Mr. Prescott has involved tho basest be¬
trayal of confidence. On the contrary from tho fact
being, as ho permits his counsel to assort, that, a
nominal consideration merely has boon paid to him,
tho fact is, as tho agroomont itsolf states (a statement
which the counsel clioso to ovorlook) that by ovory
original consideration, of labor and investment, they
wore equally eulillcil. to the. haiw/U of those inventions.
Tho agreement says : ” And whereas said Edison has
invented cerium imprueemeulu in Dailies telegraphs,
****** and said Prescott
luenlillnl In an equal iulerml in i he. mime, and others
horoaftor inoutioncd."
Tho faoilitios anil expenditures provided by Mr.
Pruscott have reached many thousands of dollars, and
whon tho inventions worn complete, in strict conformity
with tho original purpose of their- association, thoir
inventions wore all offered to tho Western Union Tolo-
graph Company. During the progress of tho nego¬
tiations tho sum of 810,000, on account, was paid to
thorn by that company for llieue e/ieei/ie Invent lone, and
subsequently an offer in writing by them for a fixed
price was accepted- by that company, in writing.
The trouble is not, as stated at page P2 (brief of
counsel for Edison) ** that Prescott mug hold thexa hi-
vnnlioiii if'/xi/cii/n 'are issued to him unused, unsold
and unlicensed forever." Tho troublois that the partios
have jointly sold these inventions alroady, and have
received part payment, but the sale doos not suit tho
purposes of Mr. Jay Gould, who is tho solo and only
interested party in this appoal. This proceeding is an
attempt to enable tho roguish inventor to soil three
times, and roouivo throe prices t <r his o t o
to Mr. Welch, in 18(19, as shown below, onco to tho
w,..i„,„ Union, and oiice to Mr. Gould; tho Inst sale
patent, No. lii(i,8li) (Appendix H, (Gl?) Edisoi
). 4!)), Iiml Imd tliu same issued to himaolfand Tin
hi jointly. Knowing all the points of a goi
milt, and unwilling to abandon any, so long as i
■is powers hold out, Edison perceives that tl
•ation won'd he Much more forcible if the npplic
/ore made alter the agreement with Prescott, in
nordingly asserts that it was so. “ AJter these sc
ioiitraets and agreements" (those of August 111
uly tltli), “Edison applied lor loiters patent fm
x machine, which were at his reipiosl issued
ami Harrington jointly (being loti, 8411, Nov.
Appendix IT,” Edison’s I rief, page 10.)
itistm of October 1st, 1871) ami April, 1871, piiivuloil
,e suliji-ot matter of tlioso instruments is tbo sumo, n
at which is denied by Mr. Prescott, and which, of
au'so, is tlic first tiling to bo determined."
Thu language here quoted does not statu the issues,
at with a slight nluondmunt, would fairly statu
loin. It is a truism, that Mr. Prescott's agreoment is
iconsislunt with Ihu other agreement " provided the
ibjout inattur of tho instnnnont is thu saino;” audit
i true that Mr. Prescott douius that they are the same,
hit the principal question is whothur, being in thoir
encral languago intended to apply to thu same gone-
id subjeut mat tor, via., telegrapbie apparatus, but the
iter or them applying by spuoiliu doueription tospeei-
e inventions after tlioy bad become eoiaplole, and the
tlior applying only by general rofureneo to a gunural
Commissioner wove :
First. — Do the' conflicting agreements apply to tlio
same subject nmttor ?
Second. — It they do so apply, is not tlio inter ngroo-
mont, a specifio nssigmnont, onpnblo to net upon ox-
isting tilings, uud convoy u title tlioroto ; mid lire tlio
earlier ngroomunts, nuy more tlinii oxeuutory eontrncts,
incupnblo to tnko effect iit the timo for tlio want of
8pooifie subjeot nmttor ?
(See Brief for Prescott, boforo tlio Com¬
missioner, pp. 31, 5, 7.)
Tlio Commissioner trontod tlioso questions ns nny
judicial olBcor would bo enmpollod to do, by consider¬
ing tlio question Inst stated first. As lins been shown,
no .ovidonoo has been offered, or pretense made, that
tho spooifie subject matter, to ivit, tho speoilio inven¬
tions ifovored by tho Inter ngreomont, wuro in oxistonoo
whoa tho onrlior ngroomont was nmdo. This being so,
ho dooidod in uocordnnoo with tho authorities, which
aro uniform mid without exception, that tho legal title
was in Prescott, and that n poison holding tho legal
title should have the evidence of the legal title to hold,
subjeot to such liiglior claims of equity ns tho courts
might imposo. Tho casos oitod by couusol for Mr.
Harrington, to show that an invention not made
or thought of but only desired nml wished for, is ca¬
pable of immodinto transfer and assignment, aro, by
their facts, inapplicable to the facts oxisting when tho
Harrington and Edison agreement was nmdn Tlmv
signuos of improvements upon these maohiuos, tho
court saying (p. 41) :
“Ini at he 1 on tho other point that tho balance
“of tlio testimony is in favor of the fact that P. A.
“ Calvert; boforo maturing his improvements and
“taking out his patent in 18-11, had in contemplation
ml hml considered tho furtlior improvement patented
* * Tlnil the nrhcwle of it had
1843 * * * That the principle of it had
' occurred to him in 1841, ami had been in some- degree
‘ tested is quite clear. # * , , , ,
“ Tlio idea had occurred to linn and had boon dis-
■ cussed boforo his contracts with the complainants.
* * * p. 42. .
“Thoehnngo was rather a furtlior progress in the
< samo ninuhino than inventing a now ono, was matur-
■ i,iL- its form without introducing any new principle,
“was merely withdrawing tho angular tooth, &o„
• '“ Tlio improvement in 1842 of wlmt was patented in
“ 1841, is proved, hi point of fact, toliavo been only a
" further development of ideas uuto,t . od n. 1841 on
" tho same subject," p. 43.
2. Bnilrond Company ti. Trimble, 10 Wallace, 367,
was a case where infringers ought to escape liability
to a suit brought by plaintiffs claiming under an assign¬
ment of a sectional right in two patents and improve¬
ments, for the term of an extension. It was shown
that tho patentee and his assignee bad always treater
tho assignment s l sfu tll« i»t°rost in tho ox
nt by winch others mo united with linn in interest
the loiters piitont asla.ii] (or, he 1ms no longer the
;lit except by consent ot his co-owners to vary or
lingo the legal status whioli his application colli¬
des. Any other notion .than this would involyo an
morality repugnant to every instinct of juslico and
lit. Tho rules of tlie patent oflico are not mado to
lilitate acts of bad faith.
Suppose Mr. Prescott hud paid $100,000 /'or his share
these inventions, wonhl the argument then lie made that
i inventor having got Ids moueg could withdraw his up-
cation, und substitute another and a new reguesl'i
Mr. Edison is nt present applying to have patents
mod to himself and Harrington, and Mr. Harrington
suros ns that ho lias paid largo sums to obtain those
lerests. Are counsel willing to agree that Edison can
w withdraw that request and authorize issue of jxdents
himselj alone, or to himself and another purchaser, if
It another can Is-, found? Counsel for Edison, ovi-
ntly thinks this can bo done. 13ut his moral and
fal test of his clioiit's obligations is too plainly ilu-
ndont on considerations whothor the obligation is
morons ” or othonviso, to ooinuioud Ins opinion to
ry general acceptance (Edison's Brief, pp. 11, 12).
Edison specifically agreed in rospoct to those invou-
ns for whioli applications have not yet boon tiled,
it ho would exoonto all tho requisite pupors, and spo-
ie porforinanco of that ugroouiont will bo directed by
on rt of equity, undoubtedly, whonover asked- In
io issued to Imnsolf jointly with George Prescott, h
issignoo, mid afterwards, to wit, on the 2!)il of Jai
jury, Goorgo Harrington * * * tiled his potitio
liat said patents should be issued to himself in:
Edison jointly, and Edison, by his letter of the sail
lay, revoking his rcqnusl Hint said patonts should 1
B8uod to Prescott and himself jointly, asked that pa
mts for his inventions might bo issued to hiniBclf ai
Earrington jointly ” (all this, also, for reasons co
trolling him at that timo, wo suppose).
“ For reasons conlroUimj him at that lime," ho did,
bIiowu nbovo, agreo to assign- an interest in those i
vontions conflicting with those claimed by Preseo
Harrington mid the Allantie A Pacific Coiupntiy,
Mr. Welch ; and “ for ronsous controlling him at TH
time," ho again convuyed the snmo inventions to A
Mills, through his attorney, Air. Gould ; and “I
reasons controlling him at THAT timo,” lie appear
before tho Patent Office, asking that the patonts mip
bo issued to himself mid Air. Harrington ; and, “ I
reasons controlling him at THIS time,” liu now as
that, notwithstanding all former convoyancos and i
qnosts, tho patonts should be issued to himself atone.
Pago 11, Brio! for Edison :
11 lie tlocs not i temj the cxer etion if the several i ’list,
meets which are if rccoril, bill lie doesdeny,- in the ci
of Prescott, tho sullicicncy of tho consideration a
tho binding effect of tho agreement, and desires tl
they may bo tested in a court or equity.”
In tins respect our desires coincide. Tho posti
in which a court of oquity would wish to find tho ti
to those inventions, in order to administor justice
accordance witli established forms, would be precis
that fixed by tho dooisioii of the Commissioner. Slio
Air. Prescott endeavor lo prevent the beneficial sale
use of the joint property, a court of equity would i
point a receiver, and cause the property to bo adui
lovolty. Wo have confidence to liehevo, however, that
Mr. Harrington does not intend to proceed to that ex¬
tremity. If his ■■ false clamor does not avail now,
wo think nothing more will bo hoard of Harrington’s
claim on Edison for these inventions.
Tho intimation that the Prescott and Edison agree¬
ment constitutes a partnership, determinable at will,
is entitled lo thu same commendation. Tho idea that
one co-owner of property can destroy tile other co-
owner’s interest by dissolving thu relation boiug en¬
tirely uniquo and ontitlod to consideration solely on
tho account nbovo named.
Pago 18, Edison’s Brief. — At tho bottom of this
pngo wo are informed that, in tho opinion of counsel, an
original interest in a tiling obtained by concurrence of
labor and investment in its production, is a “ sliijht
consideration." We agree with him that this wbolo
business is “ tho old, sad case.” Considered as minted
to tho human family in gonornl, it is as old as lying,
cheating and tho betrayal of friouds. Considered as
specially relating to Edisoii, it is as old ns 18(19, tho date
at which lie’ began, by a conveyance to his frioud
Welch, tho sorios of conveyances, or attempts to convey
utablo uutbovUy ami add, m the appemiix, u iu\
s of tlio many 'which a clerk Inis linen able with!
itncl tiino to copy. If.tlio printer bus erred i
isin« llib word “ may ” instead of the priinnilin
“ Unit," thus causing cminsol to iippeni' ns refoi
to tlio generic ivonl may,” wlion lie only moai
for to that spooilio oonibiimtion of typos wliii;
j tho word “limy” which stands in this stntut
mi say that ho has tlio honor of raising tho donl
ho lirst time . At any rale, tlio disorotion, if nr
s, is given to tlio ( oiiiiiiissioner who Inis exorcist
md dooidod (whuthor ho “ may " or “ shall, )
i tlio patont to tho assignee.
statute provided that eorlain boards of suporvi
of enmities owing debts, if tlio current rovom
nld bo insnllioiont, “ mail, !/ ihvimil ml imahlr, In
locial tax * * in liquidation of snob indohli'
. creditor having obtained a mandamns for snob
levy, tho respondents i tlio supervisors) brought
t of error.
.wayno, J., delivering tlio opinion of the eon
'Tlio counsel for the respondent insists, with z
1 ability, that tlio authority thus given involves
}f Dm hy (Skin nor,
inst “ divorso in-
id liiako a rate to
ondaots moved to
icy are not com-
tlmt Ilian man, so
no coercion .shall
;ho case of a pub-
lid if ho does not
information, and
a writ, this is but
> (2 Salkold, (109),
same statute, and
The court said:
of a thing lor the
lie word limn is the
Hon. YI says, the
strued ho Ml, foi
tending cases upon
lived in lmmoroiu
is. The rule llioj
jonntrios.
York (8 Hill, Old)
rd, 2-18), the wordi
to be mandatory,
om the anthoritio!
die otlicers, in tin
in oipiivalont lan
rest or iudividnn
ignage used, though
iptory. What they
person tho law ro
r is given, not fe
laced with . the dc
Page Hi, Edison’s Brief.— Wo do not object to tlio
ipiestiuis slated at the bottom of tlio page.
Had 'anybody suggested to tlio Commissioner that
the deed of assignment was not genuine, or that it was
procured by fraud or duress, or that it had boon law¬
fully eaueeied or annulled, doubtless ho would have lis¬
tened to such proof. Indeed, the question which he asked
the then counsel for Edison as to their pretenses in
this respect, covered all those conditions, and there
was no claim by them that, tlio deed was not genuine,
or that it was procured by fraud or duress, except the
same general suggestion which we have m tho brief
of unconseionnblonoss, or that it had been lawfnlly
canceled and annulled, otherwise than by tho revo¬
cation which was on record, and which tho Commis¬
sioner did consider.
The succeeding pages ol argument upon tho Com¬
missioner's asserted refusal to hear evidence, are en¬
tirely answered by the statement that there was no
such refusal ; and the discussion is all gratuitous.
Thr mill'd o/' cn rents i is ofmiili I idniii'n foj ns nborr,
jew us th'il none of tho inii’idiiiii.i limn in t/wulitm nm/d
/mre btvn cdiuvii.1i/ of until offer the. i/i'nr 1S72.
In this view of the ease the Coimnissionor spoke
with great moderation when he said, after asserting
that no evidence of a prior date of invention was
offered or pretended to exist, that the probabilities
were against such prior invention. We again observe
that it is the nresent counsel for Edison, who did not
Llio (nullin' or tlml business is oT liltlo
inlhnrity upon questions arising nnilijr mir
il for other uses, including tiiu insli-iiotion
ilo mind in early American history, it lias
it; ami this causes regret that, by ils in-
ig tho cureless ipmtalions anil references
if, ilnniit siionlil lie cast upon wliul has
eon regarded as an authentic historical
Ellison’s Brief.— Tim understanding of
iccasn of Nesmith r. Oalvort seems somu-
e. According to that understanding, when)
lias inailo a machine amt eontemplateil
hi 'make further improvements upon Ins
mi nmilo a deed conveying his impinve-
mftcr to lie made, a court of equity will,
lit is issued, “ compel him to make the con-
tmu llir lillu |i tit iinsml to tho assigiiue.”
dorstand it. a conveyance is no longer
lien tho title lias passed. Wo presume
; of equity will decline to occupy its pra¬
ts time ill confirming that winch is already
hat a court of equity will do is to compel
who possesses a title, which lie ought, not
;o transfer it to that person who does not,
;ht to possess it. If Sir. Prescott becomes
equitably of tho legal title by the issue of
(leordaneo with I he ruling of the Comniis-
I’age 25, Brief for Edison,—1 Thu patent referred to,
Appendix II, is that nlieady discussed above, to wit,
a chemical patent, to wlijnli Mr. Prescott has never
made any claim.
Upon tile same pagu counsel refers to tho cita¬
tions of telegraph literature in tho brief for Mr. Pres¬
cott, which was laid before tlm Commissioner of
Patents. That brief was printed before the ruling of
the G'onimissioiior upon tins point made by the counsel
for Harrington, limiting the enso before him to tho
record. After that, of course the Commissioner cud
not consider any of thu matter tliero printed. It is,
perhaps, unnecessary to say in respuut to thu last
clause on page 25, that the" TE LEG It A PH tilt " is not
“ tlio newspaper organ of the Western Union Tele¬
graph Company but, on the contrary, 1ms always
boon ils porsistont critic and enemy. To call (ho
Tchyrophm- a friend or organ of the Wustorn Union
Telegraph Company, in tho presence of any telegraph
man, would certainly utilise a smile.
Pagu 2li; Edison's Brief. — Tho questions submitted
to tho Secretary enlarge as tho brief of counsel goes
on, and we liuil, at tho bottum of this pago, tho subjuut
treated as if tho Suoretury woro authorized by law to
inquire into tho micomioniMenm of tho consideration
for tlie assignments of patents. This, certainly, is tho
largest jurisdiction which could bo suggested, and tho
3d
advocate of this jurisdiction will perhaps bo ablo to
cito some provision of law from which it can bo fairly
supposed to arise.
The entire briof . of counsol for Edison consists of two
piinoipal points :
First. — Misstatement of tho action of tho Com¬
missioner, and an elaborate argument, based on that
misstatoinont, which is instantly and completely
neutralized by a correct understanding of tho fact.
Second. — An elaborate appeal to tho Soorotury to
nllow Edison to olioat Prescott in order that ho may
avoid an notion of damages by Harrington. .
A caroful reading of that briof will discovor no other
substantial matter in it ; and throughout tho whole
will bo found evidence of an uttor incapacity in Edi-
• sou to distinguish right from wrong, and in his coun¬
sel to perceive any ronsou why ho should not prosont
to a government minister ns guod reason for ollioiul
action- thu consideration that lus cliont's “ interest ”
is, to be rid of contract obligations, assumed “ for rou-
sons controlling him at that tiino,” but which have
since become “ onerous.”
\ Roscob Conklino,
Grosvknoii P. Lowbey,
J. Huiii.ey Ashton,
Of Oouusol for Mr. Proscutt.
COMMISSIONER’S DECISION.
Thomas A. Edison.— Question of Title.
[In the matter of the. applications of Thomas A. Edison i,
assignor, (tec., Nos. 114, 05, 06, 37, 98, 99 ami 100,
for' Letters Talent Jor aliened “ Improvements in
Duplex Telegraphs,” Jiled September 1, 1874.—
Decided March 20, 1870.]
In determining to whom a pntont shall issue, wlioro
assignments liavebeuu made, tho Commissioner of
Patents must bo governed by tho record. Ho
.cannot regard moro equitable claims, but must
issue tho patent to tho person or persons having
tho legal title, the requirements of tho ollico hav¬
ing been complied with.
An instrument purporting to convey inventions not
yet in esse is not un assignment, but only an oxoc-
utory contract. .... , . , ,
An applicant is estopped from coutrndioting Ins. deed
of assignment, but an ostoppol by dood arises alono
upon a recital of a particular fnot.
It would seem that whero, in enforcing specillo per¬
formance of a contract to assign an intorost in a
future invention, equity may (after the invention
has boon perfected and patented I oarvo out an
undivided interest in tho patent, a valid assign¬
ment to a third party will afterward take otl'oot
• upon the intorost remaining in tho patonteo.
pliurt with.
In tlio investigation of this matter I have come to tin
conclusion that it is not necessary fortlio Conimissioiioi
to determine whether tlio assignment fiom Edison ti
Harrington, dated April i, 1871, rovers these inventions
or not. Howovor this question may ho decided finally
thoro is no ovidonco that the inventions described it
these applications were in existoneo at t-ho time tint
instrument was executed. It is not oven claimed by
Harrington that they wore. Ha simply says that there
is no evidence thuy .woio not then in existence. Bel
in a court of equity, one of the first requirement!
nmdu of Harrington 'would he to prove nflh'iuntiy.oly
that Kdison had perfected these inventions when in
executed thu assignment of April 4, 1871. In the ah
seneo of such proof thu probabilities must guide
These are all against thu existoneo of thu inventions a
that time. The applications were tiled more thin
three years after the date of the assignment. The lirs
record made by Kdison in tin) Patent Cilice in aie
way connected with these inventions, was somo till!
in 1878, when lie tiled his first cavoal relating to duple:
telegraphy. It is also worthy of liolice in this connoc
lion that Kdison is a very fertile inventor, as tlio gren
number of pnlunts obtained by him within tho last fev
years conclusively shows. Tho present application
extend a series, commenced iut long ago, to the nnm
bor of one hundred. It must bo lomembeied, to(
that there has buon groat activity in inventions rolat
ing to telegnqihv for a number of years past, and slier
competition has existed between inventors of variou
improvements. It is incredible, under these eircum
, m inventor like Kdison should allot
ontions described in these applications were not in rase
rlion tliu agreement was nmdu between Edison and
inrringlon. Admitting, tlien, tlml tliis deed includes
huso inventions in unmisluknblo terms, no legal title
n tliom passed thereby to Harrington ; the instrument
ms the force only of an executory contract. ( Gilmrn
,•8. Utmk, 2 Blnlchf,, 144 ; Curtis on fulfills, 4th Ed.,
ioo. 183,’ Note 2, p. .20(1.)
The legal titlo to tliusn inventions, then, was ontiroly
n Edison at the tune be oxoeuted the assignment to
Prescott, and lie alone lmd tho right to convoy any in¬
terest in the inventions, or patents granted therefor.
I’liis right he exercised with all duo formality when, in
1874, he convoyed an entire half-interest in tho inven¬
tions to Prescott. Whether this was done in violation
of an outstanding contract is not maturinl to tho prcs:
out discussion. Prescott became the legal assignee of
Edison, and, upon the execution of tl assignment of
1874, Edison and Prescott became the possessors of
the legal title to the entire inventions. This conclusion
is controlling in effect, for Edison is estopped from
contradicting his deed of assignment to Prescott. It
is •hardly necessary to cite authorities on this point-
nud I will only refer to I'tm tfauaehier vs. Kearney el
ah, 11 How., 207, and Cowman vs. Taylor, 1 Wubstcr’s
Patent Oases, 292.
It may ho alleged, howovor. that tho sumo doclriao
should ho applied to tho deed or Edison to Harrington
of 1871, and that then tho rulo .that an “ ostoppol
against an estoppel settoth the matter at largo ’’ would
recital in not an estoppel, though rmlal »/ a pin i---1
/art is." (Dm vs. Oliver, 2 Smith’s Loading Oasi
Haro & Wallace's Notes, 7th Am. Ed., 95(1.) .
The' deed in question does not point.ou , either
• recital or description, any T tel t °.1' 1)1
ent. It is vague in its terms and executory ... its ■
turo, and, for tho latter reason, as well as lor its nut
tainty, an estoppel eannot bo considered as ansi
thereupon. (Doc vs. OH tmr, Ibid, h73.)
Tho discussion of this ease might rest here, I belie
with perfect certainty that, if tho necessary formaht
liavo been observed, the commissioner imwtneems.il
order the patents to issue to Edison and Prescott. .1
I am still more strongly continued in this opinion
the fact, as I buliovo, that Prescott is the ownor of si
interest in the inventions, whatever effect may be gi
to the Harrington contract. If a court of cipu j s
hereafter carve out a two-thirds interest in the. pa <
granted and give it to Harrington, the deed of E
to Prescott will still take effect upon the lessor into,
if thegrantee chooses to enforce it. (1 Sugden <>.. A
dors, 347 ; Crown vs. .heksun,* Wheaton, 404 ,
vs Trunin, 9 Johns., 450 ; Turnbull el ah vs. Heb I
Co., 7 Oitioiai. GASiBms, 173.) Whether ... this
tingoncy Prescott can enforce the con met to the
extent of theone-third interest romannng n.Hd
or whether the terms and conditions of tho giant
such that it can bo enforced only to the extent ; o
half Edison’s o 1 si tc 1 Ufo
record before me, Prescott, in my opinion, lias m
defeasible right to some interest ... the ""'cn ion
scribed in tho applications. 11ns fact rani o
ill mi record prior In tlio issue. I sue
over I'iii- departing from this rule in lliis
iu ubsonco of niiy decision 1i,y it higher
tiling imlonls Unis granted, I think tlio.
Iiotiltl follow lliu | nil u-t iuu which, so fur
:?o uxlumls, has never beun questioned
ions nra remunded lo tlio Principal
when ready for issue, tlio pntouls will
Ellison anil Prescott, assignees- of
“ or right nro concerned, ami wlioro tlio public or third
“ parties have a elaini ihjmn that the power should bo
“ oxoreised."
Coni'lth v. City of Pittsburgh.
3 Am. Law Register, 202.
“ 'Whenevor it is providod that a corporation or officer
■may’ act in a certain way, or it shall be lawful for them
to act in a certain way, it may bo insisted on as a duty
for them to act so, if tlio matter, as horo,is devolved
upon a publio officer, and relates to the publio or third
pontons"
' Mason v. Fo'nrson, 0 How. U. S. 237.
“ It is a familiar rule that tlio word ‘ ahull ' may bo
“ substituted for ‘ mo// ’ in tlio interpretation of a stat-
« uto, wliei'o tlio good sense of. the entire enactment
“ would require tlio cliango.”
Pooplo v. Common Council of Brooklyn,
22 Barbour, 412.
In Alderman Blackwoll’s case ono of tlio questions
raised before Lord Kcopor North was wkothor a com¬
mission of bankruptcy could bo doniod by tho Lord
Chancellor.
The Lord Keeper said : “ I hold that tlio commis-
(i statute) confers nn author
1 a cortain case, it is imperil
tod to oxorciso tho authority
1 its exorcise) is duly uppliue
mid having n right to male
uso reasons wo am of opin
s not used to give a discro
niwor upon tho court am
eorcise of sncli a powor do
rotion of tho court or judge
llio particular case out o
inor of Patents u. Whituloy,
I from 1 AVallauo,'o82, is an
nine ofl’oet. ■
an nssignoo applied for tlio
•US clearly competent for the
S His DUTY, lo decide whether
OF NEW JERSEY.
B E T AV E E N
THE WESTERN UNION TELE¬
GRAPH COMPANY,
Complainant,
against
THOMAS A. EDISON, ASTD
GEORGE B. PRESCOTT,
Defendants.
git flftancetg of pent f cvjsm
Z'o ///.V //imor, Tliuononn lil'NYON, GJnimisllat «/ <& Sto*
o/‘ AVir ,/eiwi/:
Humbly complaining, showoth unto yom' Honor, von
orator, tlio Western Union Telegraph Company, a cor
pornlion and citizen of the State nt New Yolk :
That your orator, the Western Union Telcgrap
Company, is a corporation organized and doing bindnes
under the laws of tlio State of New York, for the pnrpos
of operating Telegraph lines in Hint and in other State
of tlio United States, and having its principal oflico i
tlio City of Now York.
That on or previous to the month of January, 187'
Thomas A. Edison, who, as your orator is informed an
holiovos to bo true, was thou and ever sineo has boo
. and is now a resident of tlio City of Newark, in tlio Stal
of Now Jersey, entered into an nrrnngomeut and ngrci
meat with the complainant, through William Orton, i
President, that said Edison should endeavor to invoi
improvements in Stearns’ Duplex system of Telegraph
and to invent other Duplex apparatus, and other pr
cesses in connection with Telegraphy, by which moi
than ono message could be sent on one wire at the sail
tiino ; and should uso therefor tlio linos of your orate
for. should be assigned smi coim-j j
who Simula pay such price therefor as was rcnsoiisl.1
ami just, the amount of compensation to bo aseertmm I
either by agreement between tho parties or by arbilia-
Aml your orator further shows, that in pmsuaiicoof
this arrangement ami ngreoniont, saia liaison was given
tho uso of the Electrician of the Company, ami such
otlior of its employees ns ho desired ; the uso of its wires,
workshops ami materials ; ami his experiments were
continnea for tho spaco of several months in emleavor-
in" to invent some imi.rovemonts upon the Stearns pro¬
cess, or some new process by which more than one mes-
19th any of August, 187-1, the saia Edison associated
with himself George U. Prescott, who was then the Elec¬
trician of tho complainant, nml m titles of ,.g,c, i... l.t.
wero mmlo anil entereil into botween saul Edisi n ami
Prescott, of that ante, which lecileil that saia Edison
lma in veil led certain improvements in Duplex tell gia) hs,
for which ho had then executed, or was about to ext ml u
applications for Letters Patent of the United Slates, anil
that tho mmiborH of such applications won* Oil, 95, 80,
97, 98, 99 tuid 100, boarirg dato August 19, 187*1 ; and
further reciting, that said Prescott wns entitled to an
oqual interest in tho siinie ; mid said ngreemont further
witnessed that, in eonsideralion of the premises nml of
ono dollar, the receipt whereof uas thereby nehnowl-
edged by said Edison, lie, tl.e suit! Edison, hiul sold ami
lions of which had bco
for tho purposo of it
agrood that such invo
said agroonient botwei
that wlioii tho uppiieat
bo made, that tho said
eordnnco with tho sail
to tho numbers which
mill that said Edisou
therefor ; mid said ugn
said transfer to tho sii
lowing terms and com
part of llio eonsiilorati
First. — -That both d
undivided interest in a
States or of any for
granted for nil or any c
future improvements t
of all extensions or ro
Second. — That, who
pomlod cloven liiindi
models and patent foe
solely, and without co
expense mill cost of
Patent Ollieo feos, an
foos, mill nil otlior olin
letters patent, for miy
14 should bo matlo ov given except at a prieo to which botli
pnrtios should agree in writing ; ami all net profits
should bo equally diviiloil bolweon tlio saiil purtios.
And your orator turthor shows, that said agreement
botwoon tho said Edison and Proseott was received for
record iu tho United States Patent Oflico, on Iho 2flth
day of August, 1874, and recorded in Liber It 18, page
02, of Transfers of Patents.
Aud your orntor further shows, that after tho execu¬
te tion of said agreement between said Edison and Pros-
oott, said parties continued to ninlio experiments ovoi
iho lines of your orator, under the same arrangi meat
as to them jointly, as had been theretofore made witli
< said Edison individually ; and all facilities and assist'
anoo required by tho said parties to mnho tho said ex-
" perimonts woro afforded to them by your orator.
And your orator fnrthor shows, that theso experiments
continued until on or about tho 10th day of December
16 1874, whon your orator was informod by tho said Edi¬
son and Prose, it that tho oxporimonls were in sucli
shapo as to givo a promise of developing impoitnnt re-
Doconibor, 187-1, when u formal pro
-as made by tbo said Edison an
1 orator, to fix tlio amount lo bo
1 tlio trauator ot ail United States
son and Prosuott, and inventions
I'oseott, heretofore montionod, at th
thousand dollars m cash, and a r<
lar, for oiuii oirouit oreatod. Tin
or was made to tlio Prosident of y
isidont submitted tlio snnie lo the 1
if tlio Board of Directors, and they
dont, in oonnnction with George
iirviii Groon, Yico-Presidonls of si
mittoo, witli full powor to act witli
or, on behalf of your orator, 'l'li
ho President of your orator was
tlio Stato of Now York, upon busin
him absent somo time, which fact «
Mison and Prosoott by liini ; am
return ho would tnko lip and eon
id imuiodiatoly, and leply lo the i
d that tlio oiler might bo loft ns
turn, to which said Edison and Pn i
issoutod. That tlio said President
t tiiu eleventh day of Jnnnajy, 1
ipon a eonsultation with said Mm
and other members of the Exeeu
.id Company, it was agreed that tl
olialf of tlio Company, the said pi
Edison and Prescott, which Intel in
u any way revoked or modified hi
m doolarod to tlio person who linmicu nun mu
hat ho repudiated all obligation to oouvey bis said 111-
rantions, patents, or any patents, or inlorest therein, to
,|io said Wostorn Union Tolograph Company, and at
propositions and agroemonts theretofore imido with Ilia
Company rolating thoroto, mid that ho should at all
limes rofuso to porform any of said agroemonts.
Tlio said Prosoott, upon receiving said loltor, ait-
drossod anil delivered to your orator a loiter of ratifica¬
tion, a oopy of which is horolo aunexod and marked Ex¬
hibit E, and that said Prosoott is, ns your orator is in¬
formed and believes, now ready and willing to oxccub
his portion ot said contract and to unite with tlio suit
Edison, as required by their agreements above men
tinned, to convey to the Western Union Telegraph Com
puny vonr orator, the entire interest in all the invon
lions or letters patent of tho United States which ma,
bo issuod thoroon, as above described.
And your orator further shows, that your orator, at a
times since its said acceptance of said offer of tho sai
Elison and Proicott, liquidati
nor provided in said ngrceinoi
ation payablo by your oratoi
Prosoott thereunder, has bei
' and fixing, in tho mai
the amount of considoi
to tho said Edison an
and now is ready an
Prosoott thereunder, has uoon aim ■>
willing, and hereby offers to pay to the said Edison
.. 1 . t li/ivnnf VnilinilllllL' (UK
Prescott tho cash porti
aforesaid, and to execute
n thereof remaining duo i
ill reasonable and proper i:
v incut of tho said royalty
nablo ollorts to him tho snul Edison, loi llm
if tendering to liim the remainder of said eousi
in money, ami a suitable agruenuint for tho i
of tho said royalty, and of again offering to
tho said agroomout on its part, and, upon fail'll!
by vonson of tho said onnoeahnonl and nhsnni
rid Edison, did, on tlio twenty-eighth day of J
L875, at tho City of Now York, domand of tho
:ott a oonvuyauoo to your orator of tho mattei
nl to bo sold to your orator by tho said Edison
:ott, and did then and there tender to tho
iott tho said money, and oiTorod to execute a pi
miont for soonring tho payment of ttio said rny
hereupon Prescott declared his willingness to
i-itli tho said demand and execute an assign]
o accopt the said money and agreement for no
;o oxoonto a proper assignment to your ora:
utorest in tho said inventions and letters pate
id to be suld, ns aforesaid ; but that ho was u
do bv ronson of tho romnlinlion of said Ellis
tt, to faithfully carry out and perform the
iido by them.
And your orator further shows that, unto
r secures tho exclusive control of the said
al such patents as may bo obtahiod there!
or will bo deprived of largo gains and pv<
ullages — tho exact amount of which it is 1
itimato or ascertain ; and if tho eonvoya
rtont interests and inventions are made to <
>nr orator will be subjected to litigation
mute of patents, and for notions for dii.nnj
f those to whom any such conveyance or
* made by said Edison and Prescott; ni
i nothing now known which will take th
apply the inventions embodied in, the nppk
a the Patent Oilico by tho said Edison am
iforosnid. . H
And your orator further shows, that tno
s willin'* to make tho transfer, according
nont of said Edison and Prescott with yc
mrsnancu of his agreement, but tho same
billing therein of tho said Edison, mid
if tho ngroomont butwoon tho saul Edison
tiovur made ; at other times, tlmt your orator Imd failed
to perform its part of tho contract, anil tlmt tho saiil
39 Ellison ami ProseoLt ivuro, ami each or tlioin was, al¬
ways ready, ami hail offered to perform tlieir pail o
Hal’d agroeuiont; lmt your oralm- expressly elinrgeK tin
contrary tliaruot to bo true ; nil of wliicli actings, iloings
refusals anil proluncos, are contrary to equity anil gnoi
conscionco, and tend to tlio majiifosl wrong and injur;
of yonr orator in tlio promisos. In consideration wlioro
of, and for as inncli as your orntor can have iidccpmh
relief in tlio promises only in n Court of Equity, wlmr.
matters of this nature are properly cognizable and re
40 Movable ; to tlio oml tlioroforo, tlmt said Thomas A. Ed
ison and George 13. Proscott, and tlieir, and each of tlioi
o mfoderatos, wlion discovered, may, upon then- seven
and respective oaths, true, full, perfect and distinct an
s ivors m ike to all and singular tlio premises; and llin
the defendants, tlieir agents, attorneys, solicitors, soi
vanls and workmen, and each and every of them, may 1
perpetually restrained and enjoined from conveying t
any o lior party than your orator, tiny of tlio inventions fi
which tlie defendant Edison made application for Idle:
Ll IlGU'lUUUUn* . . .
Piielps, for thU purpose of the eonstrui
orbeforo tho lOilidnyof August, 187-1
tors patent of the United States, wl
mil v bo issued for tlio sumo, or any o
d all inventions and improvements
adrnplox telegraphy, made, or to bo
fendaiits, or either of thorn, and ui wli
iidants are, or at any time may bo, jo
• virtue of tlieir said agreement botwoe
ito August 19, 1874, and received for t
ates Patent Ollioo, on tlio 20th ilny <
,d recorded in Liber K 18, page 02,
atents; or any and all loiters paten
tates, which have been or may be issu
r any of them ; or tlio right to use all e
, volitions, or letters patent, or Ihosyi
' Vnd that the defendants may be t
trained in like manner, until the lint
"a'iiiI that said Edison mid Prescott n
„in i„ tho execution of an iustrnmcn
iffuctuully convoying nml imsigning tc
for which tho defendt
D bv tlu) said ilofomhuils, or cither of tl.om, nu
li the said dufe.ida.its uvo, or at «ny timo may
interested, by virtue of tl.eir said agreement be
bom, bearing dale August 10, 1871, ami reee.ua.
ordin Hi* United Stales Patent Olbce, on the
ay of August, 187-1, and recorded ... Liber K lb,
■2, of Transfers of Patents; and all letters patent
United States, which havo been or may bo issued
q „mnCi ov- any of tlio.n ; your orator paving to
upon tl’.o delivery of said assignment, the unpaid
jo of the said sum of twenty-live thousand doll.us,
evouanling and agreeing to pay ll.e annual ioyi.1-
8283, for eaol. ei.ouit created ; and lliat your orn-
ay havo sneli oilier or furllier relief in the pi en.ises,
iv bo ngrooatde to equity and good conscience,
ly it please your Honor, the promises consider >.-d,
i-ant unto your Orator, not only the Slate's writ of
etiou, issuing out of and under the seal of this
t, directed to tl.o said defendants therein, enjoining
restraining tlio.n, and ouch of them, as aforesaid ;
ilso a writ of subpiona, issuing out of and under the
of this Court, directed to the defendants, Thomas
dison and Georgo 13. Prosco'.t, ooniinnndiiig them
i certain day, and under a certain penalty, therein ■
a insortod, to bo and appear before your Honor, in
Honornblo Court, then and there to answer ull and
nlar tile promises, and to stand to, libido and per-
i such order and doerou therein, as to your Honor
1 scorn moot, and agreeable to equity and good eon-
poses anu any . Telegraph Company,
President of the \ est U ^ ^ . that he
tlie eompla.naiit " knows the contents
believes ll.e same to be true. ^ ^ JIUMFOIID.
1875, at the City of >ow Yoik, )
Hex by Schmitt, y.
• • ... //,,* Sidle <>/’ Ai 1 1 r Jersey, m A
Commission'” M me «««<■ v
State at Sew Yoke, l ss, :
AlamVov^Bub^ibea nu(1
swoar'thnt the matters therein sot haul
1,1 WifcT my omeiai seal, at said City o
[L.s.:i Now York, this 28tli day of January, A» -
1875‘ ttp.NHY SCHMITT, _ .
execute amt deliver tlie same ; amt that lie aclinowl- o7
edged to him, said A. It. Brewer, that ho executed and
delivered tlm sumo ■ and that thereupon ho, said A. B,
Brower, subscribed his uamo as a witness thereto,
H.M.HAIGH,
Nohinj Pulin', ff< It C.
PBELIMTNABY T1ECETPT.
Ni:w Yoitli, January 10, 1875.
Whereat, Thomas A. Edison and Goorgo B. Prescott
nro tho joint ownors ot oorlain improvements m tele¬
graphy, relating to duplex and quadruple* telegraph¬
ing, for which Letters Patent, of tho United States have
1,001, applied for hv said Thomas A. Edison ; and
11'Aciw.*, said Edison and Prescott have agreed to as¬
sign all thoir right, titlo and intorest in and to saul
inventions and Letters Patent, to tho Western Union
Tolograph Company, provided tho tonus of payment
for such assignment and transfer shall bo satisfactorily
adjusted betwoon tho said partiosand tho saul rolegrapli
C u’tho'mvid Goorgo B. Prescott, hereby acknowledge
tho receipt of five thousand dollars to mo in hand paid
in part payment for my interest in the said assignment CO
IU'witness°my hand and seal 111 is sixteen tl. day of Jan¬
uary, is7o. ) gk0EGE B. PBESCOTT.
Witnoss.
(Siguod.) Geiuiit Smith.
Jim. 1G, 1875.
ltocoiveil Uvo thousand dollars, Now York, Jnmiurj
lGtli, 1875.
(Signod.) GEOltGE 13. P11ESCOTT.
Hon. Wat. Oiiton,
Prost. IV. U. 'I'ol’gli Co.
/;v 5.V:
Your Company has over 25,000 miles of wire, whit
oim now l>u profitably “ Qundrnplcxod."
Considoring tlioso 25,000 miles to bo already Di
ploxod, the Quadruples will eroato 60,000 miles add
tioiml.
For all our patonts and efforts in protecting Ihc Cot
puny in tho monopoly of tho same during their life, a
will tnlco l-20th of tho average cost of uiamtenaneo
50,000 miles of wiro for 17 years, ono-third down at
tho balance in yoarly payments during tho above-tnc
t lotted period. “Half of snob, payments to eeaso tl
momont any other ponton shall invent, and put into pm
tical operation, a Quadruples (not in fringing our pa ton t
upon a circuit of 100 miles in length.”
tween you and tho Aicslern Union loto-
y, for tho sale and transfer to that Ci ne
:iur patents relating to tho duplex ant
egraphy, subject todofinito nsoortainmen
isalion to bo paid, and especially to tin
riling tnado by you on or about tho 80tl
cor last, as follows :
ill l alio Twenty-five thousand down am
months for all Patents, and a royally oi
GG per year for each oireuit created.”
11 take Twenty-iivo thousand down for a
a royalty of $283 per year for each cii
Iffy you, on behalf of the Western Unio
mpaiiy, that tho proposition for componsi
oteil, and by you marked “2d,” is liereli
imlc, and the Company is ready to clos
ut vour curliest eonvt irienco, unci to mm
outs called for, upon receiving from yt
monls and transfers of tho said Patonts.
Exhibit E.
ucian’s DePAIITMENT,
’nnlcrn Union Teletjniph Compmuj.
Geohoe 13. Piiescott,
EkdrMan.
William Oiiton, Pmhlenl.
)cnr Sir :
ir favor of tho 10th instant, accepting tlio proposi-
heretofore rnado by Thomas A. Edison anil myself
o salo to tho Western Union Telegraph Company
tain inventions, and all onr right, title and interest
cry chavnetor in, to, under and connected with all
vs Pntont of tho United States, which may ho
ed to ns for improvements in duplex and qnnilrii-
tolographs, and fixing tho compensation to ho paid
loordaneo with onr proposition made and marked
' on or about tho 110 ill day of December, came dnly
ml ; and, in reply, I have to say that 1 am ready to
i with said Edison in conveying all swell Patents oi
‘lions, or to assign my interest separatelv, if I may
illy do so.
Yours, very respectfully,
GEOBGE 33. PllESCOTT.
|w fcucevn of fjw ievocn.
Mwtrn
■„E Westekx Union Teleoiiapii
Company, Comphmnnl,
Thomas A. EmsoN and Geoiiof. 33.
Piinscorr, Drfimhiuln.
State of New Yomi, )KS .
Cilji mill Cmtnhj of New York, )
Marshall Eoll'erts, being duly sworn, says: ITo is a
resident of tho City and County of Now York, and is we 11
acquainted with Thomas A. Edison and George B 3. i os-
colt 11 1 f 1 ts lo o in el 1 hat on tl e Otl
day of .Taunary, 1875, deponent, on bolialt of tl,0.T' ^
torn Union Telegraph Company, went to l
Stale of Now Jersey, and there called upon said lliomii.
A. Edison, and delivered to him a paper signed bj
William Orton, as President of saidH ostorn Umon It
graph Company, a copy of which is hereto attached a
Exhibit A, and handed to him said paper wl.i hsau
Edison read in deponent’s presence. lining n itcly nfto
reading the same, said Edison said first No «ud tho.
further stated to deponent I t hat « ^
said Company any interest whatever in any of his Pu-
touts. Ill tlio course of tho conversation, saiil Edison
said, tliat if tlio Western Union Tologrnph Company
wore ready to pay licit a million of dollars for tlio Pa¬
tents, in which ho and Mr. Prescott worn interested,
that perhaps the Automatic Telegraph Company might
soil said Patents to tlio Western Union Telegraph Com¬
pany. Deponent was well awaro at the time that the
Automatic Telegraph Company is a corporation in the
j City of Now York, organized for tlio purposo of doing
tologrnph business, ami is generally regarded to lie a
rival in business to tlio Western Union Tologrnph Com¬
pany. Said Edison did not stato how tlio Automatic
Telegraph Company would lie empowered to make the
conveyance of title to any of his said Patents. And
further deponent saith not.
MARSHALL LEFFEUT.S.
Sworn to before mo, tliiB '27th 1
day of January, 1875, ‘ |
•n Witness my hand and ollieial seal,
State ok New Yoiik, I ,
City mill. Cnmly nf New York, f ' "
I, William H. Clarkson, Commissioner for tlio Stato
of Now Jorsoy, residing in tlio City of New lTork, in tlio
County and Stato of Now York, do certify, that on this
80 27th day of January, 1875, tlio nliovo named Marshall
Lofforls subscribed tlio forogoing aflidavit in my pres¬
ence, in tlio City of Now York, anil did depose and
’swoar that tho matters therein set forth wore true.
In witness whereof, I have hereunto sot my hand
and nflixed my ollieial seal, this twenty-
sovonth day of January, in tho year oiglit-
[i„ s. ] eon hundred and seventy-five, in tho Coun¬
ty and Stato aforesaid.
. WILLIAM II. CLAltlvSON,
Thomas A. Edison, Esq.,
and 0 no non 11. Pbescott, Esq.
Gentlemen :
IUforriug to tho negotiations and arrangements here¬
tofore made between you and tlio Western Union Tele¬
graph Company, for tho sale and transfer to that Com¬
pany of all vonr patents relating to tho duplex and
qnadruplex telegraphy, subject to definite ascertainment
of tho compensation to bo paid, and especially to tlio
two oilers in writing made by you on or about tho 80th
day of Decombor last, ns follows :
“ 1st. Wo will tnko Twonty-fivo thousand down and
“25,000 in six months for all Patents, and a roynlly on
“ duplex of 8100 por year for each circuit cronlcd.”
a 2d. Wo will take Twonty-fivo thousand down for all
" patents, and a royalty of 8283 por year for each eir-
“ cuit created."
I hereby nntifv you, on liohalf of the Western Union
Telegraph Company, that tho proposition for compensn
lion above quoted, and by you marked “ 2d, is hereto
accepted as made, and tlio Company is ready to clos,
tlio-bnsinoss at your earliest convt nienco, nml to male
all tho payments called for, upon receiving from jo
propel a« ignmonls ami transfers of the said Patents.
Yours, very respectfully,
‘ WILLIAM OPiTON,
Pmiite.nl.
|« fcum'w of pew gcvscg.
Jlctkeeu
The Western Union Tei.eorai’ii
Company, Comphuimul,
Thomas A. Edison mid Gboroe B.
Prescott, Defemhnis.
State op New Tore, 1
Citi/ <wd Counlij of New York, f ss' *
Govritt Smith, being duly sworn, deposes and mi
tlint ho vosidos in Astoria, Long Island City, and is
acquainted with the parlies above named ; that d
neat had a conversation witli tho defendant, Ediso:
tlio City of Now York, on the Ulili day of January. 1
in which lie informed deponent that lie, said Ed;
was not going to tho otlieo of tho Western Union
graph Company, tho complainant herein ; that its I
idout, Hr. Orton, had not troatod him right; thn
was ohligod to got help from somo sourco, and', sc
no prospect of it from tho Wostorn Union T’olegi
Company, ho was foreod to look for assistance
whoro, and that ho had found just tho man to help
out ; that 1m should tako tho quadruples to the np|
tionj that tho complainant could not use it, and if
did they would lmvo trouldu about it ; and that he
going for tho Western Union holograph Company
hot, and was interested with business men, men
slopt with their boots on ; that ho had stopped mu
tho quadruplet: apparatus at the shop, and tho I
t ho had done with thorn. The said Edison also :
mod doponent that ho, said Edison, had an arran;
lit in his shop, by a boll wiro, by which ho was no
1 wlion any ono from tho Wostorn Union Telogra
iiipnny cullod to soo him, so as to avoid such porso
1 that ho had caused himself to bo doniod to do|
it and to said Prescott while at his shop in Nowai
d furthor doponont saitli not.
GE1TIUTT SMITH.
orn to and subscribed lie-1
bro mo, in tho said City of 1
STow York, this 27th day of f
rmuiary, 1875. J
Witnoss my hand and ntlicinl seal,
s.'| William II. Clarkson,
Commissioner for New Jersey, in New York.
117 Broadway, Now York City.
State of New York. 1 .
I,, ,„„l Count y of New York, f ss"
r, William IT. Clarkson, Commissioner for tho Sti
Now Jersey, residing in tho City of New York, in I
inntv and State of Noyv York, do certify, that, on t
th day of January, A. D.,1875, tho above limned G
t Smith subscribed tho foregoing nlliduvit in my pi
eo, in tho City of New York, and did doposo i
■enr that the mattors therein sot forth wero tine.
In witness yvhoroof, I lmvo horounto sot my hi
and nflixed my olliuial seal, Ibis tivoi
• seventh day of January, in tho year oif
1 L. s. I eon hmidrod and sovonty-livo, in tho Co
ty and State aforesaid.
WILLIAM II. CLABKSON,
93 New jEnsr.y.to wit: The Mute oj Mia ,/ersci/, w
A. Ellison and Goorgo B'. Prescott, their agents,
[L. s.] attorneys, solicitors, servants nml workmen,
nml eneli nml every of them, Gnr.E’i'isn :
Warms, it lmtli been represented to us, in onr Court
of Olimrcory, on tiro part of llio Western Union Tele-
graph Compnuy, complainmit, tlint it 1ms lutoly exhibit
oil its bill of complaint against you, tho saiil Tlionins A
Ellison anil Goorgo 13. Prescott, llio clofoiiilmits, to lit
roliovoil, toneiiing tlio inattors sot forth in tho saiil bill
01 in which said bill it is, among other mattors, sot forth
'that you, tho said defendants, aro combining anil con
federating with others to injure the complainant, touch
ing tho mattors sot forth in tho saiil bill, and that tin
notings anil doings of you, tho said defendants, aro con
trnry to equity and good eonsciouco :
I Ve, therefore, in consideration of tho promises, mill r
tho particular mattors set forth in the said bill, tl
strictly onjoi n anil command you, tho said Thomas J
Edison anil Goorgo B. Prescott, and all .anil oveiy tli
93 persons boforo mentioned, and each and every of yn
nnilor tho penalty that may fall thereon, that you, an
ovory of you, do absolutely desist and refrain from cm
voying to any other party than said complainant, any
tho inventions for which tho ilofonilant, Edison, mm
application for Letters Patent of tho United States, 1
applications bearing date August 19, 1871, and number)
91, 93, 9G, 97, 98, 99 and 100, anil all or any Lotto
Patent of tho United Stales, which have been or may 1
issued for tho sumo inventions, or any of them, or m
96 anil all tho improvements in duplex telegraphs, the d
furs of Patents, or any anil all Letters Latent
nitoil States which liuvo been or may bo issued
lino or any of them, or tho right to uso all oi
lid inventions or Letters Patent, or the system
by tho same, until you. tho said defendants,
o fully answered tho said bill of complaint, and
Court shall make other order to tho contrary.
», His Honor, Theodore llunyon, onr Chnn-
Tronton, tho twenty-eighth day of January, in
of our Lord ono thousand emlit hundred and
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FINANCIAL CONTRIBUTORS
PRIVATE FOUNDATIONS
Alfred P. Sloan Foundation
Charles Edison Fund
The Hyde and Watson Foundation
Geraldine R. Dodge Foundation
PUBLIC FOUNDATIONS
National Science Foundation
National Endowment for the Humanities
PRIVATE CORPORATIONS AND INDIVIDUALS
Alabama Power Company
Amerada Hess Coiporation
AT&T
Association of Edison Illuminating Companies
Battelle Memorial Institute Foundation
The Boston Edison Foundation
Cabot Corporation Foundation
Carolina Power and Light Company
Consumers Power Company
Coming Glass Works Foundation
Duke Power Company
Edison Electric Institute
Exxon Corporation
General Electric Foundation
Gould Inc. Foundation
Gulf States Utilities Company
The Institute of Electrical & Electronics Engineers
International Brotherhood of Electrical Workers
Iowa Power and Light Company
Mr. and Mrs. Stanley H. Katz
Matsushita Electric Industrial Co., Ltd.
McGraw-Edison Company
Middle South Services, Inc.
Minnesota Power
New Jersey Bell Telephone Company
New York State Electric & Gas
Corporation
North American Philips Corporation
Philadelphia Bectric Company
Philips International B.V.
Public Service Electric and Gas Company
RCA Corporation
Robert Bosch GmbH
Savannah Electric and Power Company
Schering Plough Foundation
Texas Utilities Company
Thomson-Brandt
Transamerica Delaval Inc.
Westinghouse Educational Foundation
Wisconsin Public Service Corporation
BOARD OF SPONSORS
Rutgers, The State University of
New Jersey
Edward J. Bioustein
T. Alexander Pond
Tilden G. Edelstein
Richard P. McCormick
James Kirby Martin
New Jersey Historical Commission
Bernard Bush
Howard Green
National Park Service, Edison
National Historic Site
Roy W. Weaver
Edward J. Pershey
William Binnewies
Lynn Wightman
Elizabeth Albro
Smithsonian Institution
Brooke Hindle
Bernard Finn
EDITORIAL ADVISORY BOARD
James Brittain. Georgia Institute of Technology
Alfred D. Chandler, Harvard University
Neil Harris, University of Chicago
Thomas Parke Hughes. University of Pennsylvania
Arthur Link, Princeton University
Nathan Reingold, Smithsonian Institution
Robert C. Schofield, Iowa State University
CORPORATE ASSOCIATES
William C. Hittinger (chairman), RCA Corporation
•Arthur M. Bueche, General Electric Company
Edward J. Bioustein. Rutgers, The State University of N J.
Cees Bruynes, North American Philips Corporation
Paul J. Christiansen, Charles Edison Fund
Philip F. Dietz, Westinghouse Electric Corporation
Paul Lego, Westinghouse Electric Corporation
Roland W. Schmitt, General Electric Corporation
Robert I. Smith, Public Service Electric and Gas Company
Harold W. Sonn, Public Service Electric and Gas Company
Morris Tanenbaum, AT&T
Copyright * 1985 by Rutgers, The State University
All Rights Reserved. No part of this publication including any portion of the guide and index or of the
microfilm may be reproduced, stored in a retrieval system, or transmitted in any form by any means— graphic,
electronic, mechanical, or chemical, including photocopying, recording or taping, or information storage and
retrieval systems— without written permission of Rutgers, The State University of New Jersey, New Brunswick,
New Jersey.
The original documents in this edition are from the archives at the Edison National Historic Site at West
Orange, New Jersey.
Cl fidlsoru ^o.
A SELECTIVE MICROFILM EDITION
PARTI
(1850-1878)
Paul B. Israel
Assistant Editor
Assistant Editors:
Toby Appel
Keith A. Nler
Andre Millard
John Deasey
Leonard De Graaf
David Fowler
Susan Schultz
Assistant Editor
Research Associates:
Robert Rosenberg
W. Bernard Carlson
Student Assistants
Pamela Kwiatkowski
Joseph P. Sullivan
Barbara B. Tomblin
Rutgers, The State University of New Jersey
National Park Service, Edison National Historic Site
New Jersey Historical Commission
Smithsonian Institution
University Publications of America
Frederick, Maryland
1985
Edison signature used with permission of McGraw-Edison Company.
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